ManDirk (Pty) Ltd v YaoChang Lin and others 1993 BP 479
Proctor and Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and another 1997 (3) SA 292 (T) R
Rollamatic Engineering (Pty) Limited v President Steel Corporation Pty Limited 1973 BP 437
Setsokosane Busdiens (Edms) Bpk v Voorsitter, Nasionale Vervoerkommissie en 'n ander 1986 (2) SA 57 (A)
Stoner v SA Railways and Harbours 1933 TPD 265
Willows Francis Pharmaceutical Products Ltd v Aktiebolaget Astra Apotekarnes Kemiska Fabrieker 1960 (3) SA 726 (A)
Wolgroeiers Afslaers (Edms) Pty v Munisipaliteit van Kaapstad 1978 (1) SA 13 (A)
United Kingdom
GE Trade Mark [1973] RPC 297
Page 79 of [1998] 3 All SA 77 (A)
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Judgment
PLEWMAN JA
The amendment to patent specifications in terms of sections 50 and 51 of the Patents Act 57 of 1978 ("the Act") has
become a contentious matter. This appeal concerns amendments to the complete specification of South African
Letters Patent 77/1894 in respect of an invention entitled "Disposable Diaper with Elastically Constricted Crotch
Section" ("the patent'). Reports of patent cases show that the patent (the term of which has now finally expired)
has formed the subject matter of litigation in at least eight other proceedings and, so the Court was informed, there
is still litigation in progress which will be affected by the decision in this appeal. An observation that the fields of
human endeavour in which ingenuity may be applied in pursuit of financial gain seem infinitely wide may perhaps be
excused.
By a notice filed on the afternoon preceding the hearing the respondent withdrew its opposition to the appeal
and abandoned its crossappeal. An explanation of the origin and the form of the proceedings is called for. In 1995
the appellant, who had taken assignment of the patent, instituted an infringement action against the respondent.
It also launched an application for the grant of a temporary interdict against the respondent. Respondent entered
an appearance to defend the action, opposed the application and went onto the offensive by applying on motion for
the setting aside of three amendments which had been made to the patent in the years 1982 and 1993.
The interdict application and the application to set aside the amendments were argued before Preiss J, sitting as
Commissioner of Patents, on 12 May 1995. In so far as the application to set aside the amendments was
concerned, he with the consent of the parties and after what is described in the judgment as a "brief argument"
referred the application to the full court. The reason for this order was that there had been a
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number of conflicting decisions in the Commissioner's Court dealing with the basis of applications for setting aside
amendments of patent specifications as indeed there have. The application to set aside the amendments was
then argued before a full court on 11 June 1996. The decision of the full court is reported as Proctor and Gamble SA
(Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and another 1997 (3) SA 292 (T). (The appellant has since that
hearing changed its name.). The court set aside all three amendments.
On 2 December 1996 leave to appeal to this Court was granted by the full court (which had sat as a court of first
instance). In so ordering, the court also granted leave to the respondent to crossappeal. The crossappeal
concerned an attempt by respondent to lead further evidence in the application to set aside the amendments. No
order was made thereon. Consequently no appeal lay a situation which was merely the final episode in a comedy
of errors which it is happily unnecessary to discuss. The "crossappeal" has been abandoned as has been pointed
out and no more need be said of it.
It remains only to state that the full court's order has not been rendered academic by the settlement of the
litigation between the parties which led the respondent to withdraw its opposition to the appeal. The respondent
has not abandoned the order in its favour. it has merely withdrawn its opposition to the appeal. The court's order,
since it affects the state of the specification (in effect as of 1982), is an order in rem. It will also have a bearing on
other litigation still pending.
The order of the court a quo covers what are referred to in its judgment as "the first", "the second" and "the
third" amendments to the patent specification. The main question in contention is the proper interpretation of
section 51(10)
Page 80 of [1998] 3 All SA 77 (A)
of the Act, but it is necessary to set out the full sequence of events. These are as follows. The patent was applied