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contains no suggestion that the subcoating layer should consist of more than one excipient or compound: if
anything it suggests the contrary. In describing the subcoating layer the specification says no more than that it
"consists of one or more water soluble inert layers, optionally containing pHbuffering compounds" and that the
material for the subcoating layer "is chosen among the pharmaceutically acceptable, water soluble, inert
compounds or polymers used for filmcoating applications." Had it been thought essential that the subcoating
layer should consist of more than one compound one would have expected something to that effect to have
been said. What is decisive, however, is the composition of the subcoating layer in the various examples that
are given in the specification of what are said to be "the invention . . . described in detail." In many cases the
subcoating layer consists of a single compound (usually dissolved in distilled water or ethanol). That is entirely
inconsistent with a construction of claim 1 that confines the invention to preparations in which the subcoating
layer consists of at least two different excipients or compounds.
[16] It is clear, when seen in that context, that the words in claim 1 were not intended to claim as an essential
element of the invention a subcoating layer that consisted of more than one excipient or compound, and to
exclude a subcoating layer that consisted of only one, notwithstanding that the words were used in the plural.
In my view, the words were intended instead to refer merely to a quantity of excipient or compound rather
than
Page 145 of [2002] 4 All SA 138 (SCA)
to excipients or compounds of more than one kind. In those circumstances the respondent's product infringes
the patent and the application ought not to have been dismissed on that ground.
[17] Accordingly the appeal is upheld with costs, including the costs occasioned by the employment of two counsel,
and the following orders are made:
(a) The order of the Commissioner of Patents is set aside.
(b) It is declared that the respondent, by importing, making, disposing of or offering to dispose of its Ulzec
products infringes claim 1 of Patent No. 87/2378.
(c) In accordance with the order made by this court on 17 May 2002 the application for the temporary interdict
is remitted to the Commissioner of Patents.
(Hefer AP, Harms, Farlam and Navsa JJA concurred in the judgment of Nugent JA.)
For the appellant:
P Ginsburg SC and CJ van der Westhuizen instructed by Adams & Adams, Pretoria
Correspondents for the appellant:
Honey & Partners, Bloemfontein
For the respondent:
LC Bowman SC and JN Cullabine instructed by Spoor & Fisher, Pretoria
Correspondents for the respondent:
Israel & Sackstein, Bloemfontein
Footnotes
1 [2001] 3 All ER 433 (HL) at 447a.
2 Also reported at [1999] 2 All SA 543 (SCA) Ed.
3 Also reported at [1997] 1 All SA 644 (A) Ed.