Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and others
 4 All SA 221 (SCA)
SUPREME COURT OF APPEAL
7 September 2011
LTC HARMS AP, FR MALAN, VM PONNAN, S SNYDERS JJA and CM
. Editor's Summary . Cases Referred to . Judgment .
 Intellectual property law Patents Invalidity based on obviousness Application to amend to cure invalidity Appeal
against dismissal of application Court concluded that the respondents had failed to establish that the invention claimed
did not involve an inventive step because it was obvious to a person skilled in the art.
 Intellectual property law Patents Requirements for patentable inventions Patents Act 57 of 1978 Section 25
Invention must be new and must involve an inventive step.
The appellant instituted action against the first respondent based on the alleged infringement of its patent. The first
respondent denied such infringement and counterclaimed for revocation of the patent on grounds of, inter alia, lack
of novelty and obviousness. The patent had 15 claims of which claims 2 to 12 were directly or indirectly dependent
on claim 1 while claim 13, although based on claims 1 to 7, contained an added aspect that was, for the purposes of
this judgment, of special importance. The Commissioner of Patents was called upon to consider the issues of validity
and infringement in relation to claim 1 only. He concluded that claim 1 was valid and infringed, and issued a
certificate of validity.
On appeal by the first respondent, the present Court upheld the appeal on the basis that the invention claimed in
claim 1 was obvious. The counterclaim was upheld and the patent was revoked. The appellant then applied for the
amendment of its patent, but the Commissioner of Patents dismissed the application. He held that the amendment
could not be granted because it would not cure the invalidity of the patent on the ground of obviousness. The
present appeal was against that judgment.
The appellant had not sought to effect any amendments to the body of the specification but only to claims 1 and
13. The object of the proposed amendments to claim 1 was to limit its scope through the introduction of an integer
of the original claim 13 into claim 1. The main objections to the amendment were based on continuing obviousness
and, in the alternative, culpable delay and reprehensible conduct.
Held It was necessary to restate some basic legal principles on obviousness that appeared to have been
overlooked and that impacted on the case.
A patent may be granted for any new invention which involves an inventive step, and may be revoked on the
ground that the invention concerned is not patentable under section 25. There are, accordingly, two relevant
requirements for patentability. The first is that the invention must be new, and the second is
Page 222 of  4 All SA 221 (SCA)
that it must involve an inventive step. The Court found that in dismissing the appellant's application, the
Commissioner of Patents committed certain errors. The present Court concluded that the respondents had failed to
establish that the invention claimed in the amended claims 1 and 13 did not involve an inventive step because it
was obvious to a person skilled in the art.
The respondents requested, in the event of the Court finding that the amendment would cure the invalidity, that
the application be refused in the exercise of the Court's discretion. The first ground advanced was the patentee's
alleged culpable delay in applying for the amendment. The Court found no premise for the contention.
The appeal had to be upheld to the extent that the Court below dismissed the application to amend the
specification and finally revoked the patent. The application to amend the specification of the patent was granted.
For Patents see:
LAWSA Second Edition Volume (Vol 20(1), paras 148195)
Cases referred to in judgment
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd 2007 BIP 1 (C of P)