culpable delay in applying for the amendment. The argument was based on the fact that the patentee had
known of the Dreyer prior art and that it delayed to effect an amendment until after the adverse judgment of
the SCA. There are many answers to the point but what follows suffices. Dreyer was quoted as an
anticipation, which it is not. As far as obviousness is concerned, not even Northpark had thought that it could
be the basis of a finding of obviousness. I have already indicated that its case before Southwood J was based
on a mosaic of Handy and Anderson. The SCA, however, based its judgment on a mosaic of Dreyer and
Anderson. How that should have been apparent to the patentee before the SCA judgment has not been
explained.
[47] One can dispose on more or less the same basis of the allegation that the patentee was guilty of
reprehensible conduct because, being aware of the invalidity of the patent in the light of Dreyer, it sought to
enforce its patent rights. Once again, the premise on which the argument is based has not been established.
It is also not possible to dispose glibly of the fact that
Page 237 of [2011] 4 All SA 221 (SCA)
Southwood J had held in a fully reasoned judgment that the patent was good. If he thought so after a
lengthy trial it is difficult to understand why the patentee should have thought differently, especially since it
took legal advice before it commenced litigation.
[48] The respondents did not ask us to consider the grant of the amendment subject to conditions. The reason
may be because Northpark is a propertyowning company and the third and fourth respondents allege that
they do not infringe the amended claims. It would, accordingly, be wrong to impose conditions of which the
patentee had not been forewarned.
Conclusion
[49] This means that the appeal must be upheld to the extent that the order of the court below dismissed the
application to amend the specification and finally revoked the patent. The orders not appealed against stand.
Because of the partial success of the respective parties in the court below the appropriate order would be
that the parties pay their own costs in that court. The appellant is entitled to its cost of appeal including the
costs of two counsel.
Order
A. The appeal is upheld with costs (jointly and severally against the first, third and fourth respondents), including
the costs of two counsel.
B. Paragraphs 3, 4 and 5 of the order of the court of the Commissioner of Patents are set aside and replaced
with the following:
"3
The application to amend the specification of Patent ZA 95/0812 is granted.
4
The provisional order of revocation lapses.
5
The parties are to pay their own costs."
(Ponnan, Snyders, Malan JJA and Plasket AJA concurred in the judgment of Harms AP.)
For the appellant:
P Ginsburg SC and DR Harms instructed by Adams and Adams, Pretoria and Lovius Block Attorneys, Bloemfontein
For the respondent:
CJ van der Westhuizen SC and RB Engela instructed by DR Gerntholtz Incorporated, Pretoria and McIntyre and Van der
Post, Bloemfontein
For the second respondent:
Registrar of the Court of the Commissioner of Patents, Pretoria
Footnotes
1
2
3
4
5
6
7
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and others (95/0812) [2010] ZACCP 5 (30 April 2010).
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and others (95/0812) [2010] ZAGPPHC 135 (5 October 2010).
The second respondent is the Registrar of Patents who was cited for formal reasons and who did not take part in the
proceedings. The third respondent is Marais Engineering (Pty) Ltd, and the fourth respondent is Mr Marais Steyn, the
sole shareholder of the first and third respondents. The third and fourth respondents were not party to the initial
litigation. How they became involved in the amendment proceedings is no longer of consequence but appears from
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd 2009 BIP 37 (C of P).
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd 2007 BIP 1 (C of P).
Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46, 2008 BIP 14 (SCA) [also reported at
[2008] JOL 21604 (SCA) Ed].
At para [18].
S 68:
"Relief for infringement of partially valid specification Where in any proceedings for infringement of a patent, the
commissioner finds that any claim in the complete specification in respect of which infringement is alleged, is valid,
but that any other claim therein is invalid, the following provisions shall, notwithstanding anything contained in
section 66(5), apply, namely
(a) If a counterclaim for the revocation of the patent has been made in the proceedings on the ground of the
invalidity of any claim in the specification, the commissioner may postpone the operation of any order issued