Judgment
HARMS AP:
Introduction
[1] This is an appeal against a judgment by the Commissioner of Patents (Murphy J) who dismissed an application
by the appellant, Ausplow (Pty) Ltd, an Australian company (the "patentee"), to amend its patent ZA 95/0812
entitled "Improvements in or relating to seeding machinery".1 The patent application was filed on 2 February
1995 and proceeded to grant on 29 November 1995, claiming priority from an Australian patent application.
The appeal is with leave of the learned Commissioner.2
[2] The background to the application for amendment is this. The patentee instituted an infringement action
against the first respondent, Northpark Trading 3 (Pty) Ltd, alleging infringement of "the claims" of the
patent.3 The patent has 15 claims: claims 212 are directly or indirectly dependent on claim 1 while claim 13,
although based on claims 17, contains an added aspect that is, for the purposes of this judgment, of special
importance. Claims 14 and 15 are omnibus claims and do not require consideration.
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[3] Northpark, while denying infringement, counterclaimed for the revocation of the patent on a number of
grounds but for present purposes it is only necessary to mention two, namely, lack of novelty and
obviousness. Southwood J, sitting as Commissioner of Patents, was called upon to consider the issues of
validity and infringement in relation to claim 1 only. He concluded in a detailed judgment that claim 1 was valid
and infringed and issued a certificate of validity.4
[4] Northpark lodged an appeal to this Court, which upheld the appeal on the basis that the invention claimed in
claim 1 was obvious.5 The judgment was marked "not reportable" and I shall refer thereto in the course of
this judgment as "the SCA judgment". Because no other claim was in issue it was not necessary for the SCA
to express any view on the issue of infringement. It consequently upheld the counterclaim and, subject to the
following, the patent was revoked:
"The order [for revocation] is provisional. It will become fully operative if the patentee does not within one month file
notice of an application to amend the patent, or, having filed such application, withdraws it. If an application as
aforesaid is made and not withdrawn, it shall be decided at the hearing of such application whether or not the
revocation order is to be put into operation."
[5] This order was, according to the judgment, justified on the following basis:
"We were asked by counsel for the [patentee], if that were to be our finding, to postpone the order of revocation to
enable the patentee to effect amendments to the specification, as contemplated by s 68 of the Act. The appellant's
counsel advanced no adequate reason why that should not be done."6
There may have been a misunderstanding between counsel and court because section 68 of the Patents Act
57 of 1978 could not underpin the eventual order.7 For section 68 to have had application the SCA should,
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in addition, have found one or other claim valid and infringed, something the court did not consider or hold.
[6] The reference to section 68 gave rise to a number of disputes, futile litigation and unnecessary side issues, all
mentioned in the judgment of Murphy J. It is not necessary to revisit them because the answer appears to me
to be as follows. In cases where a patent is found to be invalid, whether partially or in the whole, and section
68 does not apply, it is customary for courts to afford the patentee an opportunity to apply for an amendment
which may save the patent. This Court has, in the past, relied on section 61(3) of the Act for justifying such an
order (EnsignBickford (SA) (Pty) Ltd and others v AECI Explosives and Chemicals Ltd 1999 (1) SA 70 (SCA) at
84DE [also reported at [1998] 4 All SA 453 (A) Ed]). The provision gives the commissioner, when dealing
with an application for revocation of a patent, a discretion to "decide whether the patent shall be revoked or
whether and, if so, subject to what amendments, if any, of the specification or claims thereof, the patent shall
be upheld". A party counterclaiming for revocation of a patent in terms of section 65(4) "applies" for all intents
and purposes in a prescribed manner for its revocation (section 61(1)). It is, therefore, not necessary to rely
on the doubtful proposition put forward by the respondents that the order under consideration could have
been made with reference to an inherent jurisdiction.
[7] If regard is had to the whole of the SCA judgment and not to the quoted paragraph only, it is in my view clear
that the reference to section 68 instead of section 61 was an error which did not affect the clear language of
the order (Firestone SA (Pty) Ltd v Genticuro AG 1977 (4) SA 298 (AD) at 304DH [also reported at [1977] 4 All
SA 600 (A) Ed]).
[8] In the general course of events, if issues of lack of novelty and obviousness arise, courts as a matter of logic
first decide the novelty issue and then obviousness (EnsignBickford (SA) (Pty) Ltd at 80EF). Furthermore, if
courts find that a patent is invalid on one ground, for instance, on the ground of lack of clarity (ambiguity) or,
as in this case, obviousness, they normally consider the other grounds of invalidity as well for the sake of not
only questions of costs but in relation to the suspension of the revocation order and the later amendment
application (Genticuro AG a t 6 4 5 (sic)). The court that subsequently has to deal with the amendment
application has to know what the trial or appeal court's findings in relation to the other aspects were. The
SCA did neither and this gave rise to an anxious analysis by Murphy J of the SCA judgment in the light of that
of Southwood J in an attempt to understand the scope of the SCA findings and its reasons for overruling the
latter. For reasons that will become apparent, it is not necessary for purposes of this judgment to revisit