McKelvey and others v Deton Engineering (Pty) Ltd and another
[1997] 3 All SA 569 (A)
Division:
Supreme Court of Appeal
Date:
28 May 1997
Case No:
657/95
Before:
EM Grosskopf, Nienaber, Harms, Schutz and Plewman JJA
Sourced by:
JJF Hefer and I Potgieter
Summarised by:
S Moodliar
Parallel Citation:
1998 (1) SA 374 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Patents Conflicting claims Approach to be adopted "Prior claim" approach compared with "whole contents" approach
Section 25(7) of Patents Act 57 of 1978 adopting "whole contents" approach.
Patents and trademarks Conflicting claims Approach to be adopted "Prior claim" approach compared with "whole
contents" approach Section 25(7) of Patents Act 57 of 1978 adopting "whole contents" approach.
Interpretation of statutes Section 25(7) of Patents Act 57 of 1978 Approach to be adopted where conflicting
applications filed Use of word "matter" in subsection "Whole contents" approach adopted and not "prior claim"
approach.
Editor's Summary
The issue before the Court was the approach to be adopted when conflicting patent applications were filed.
Held The Court set out the two basic approaches:
(i)
in the "prior claim" approach, the claims of the later application were compared with the claims of the earlier one;
(ii)
in the "whole contents" approach, the claims of the later application were compared with the disclosure or contents of
the later one.
The Court considered the history of the South African legislation relating to patents. Section 25(7) of the Patents Act
57 of 1978 provided that the state of the art of an invention comprised "matter" contained in an application for a
patent. In several provisions of the Act, there was a clear dichotomy between the invention claimed and the
"matter" supporting the claim. The use of the word "matter" indicated that the subsection was not restricted to the
claim of an application. The Court concluded that the Act adopted the "whole contents" approach. This approach
had not been replaced with the "prior claim" approach when the Act was amended in 1983.
The appeal was upheld with costs.
Notes
For Patents, see LAWSA (Vol 20, paragraphs 167)
For the Patents Act 57 of 1978, see Butterworths Statutes of South Africa 1996 (Vol 1)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
BM Group (Pty) Ltd v Beecham Group Ltd 1980 (4) SA 536 (A)
Beecham Group Ltd v The BM Group (Pty) Ltd 1977 BP 14 (C of P)
Page 570 of [1997] 3 All SA 569 (A)
Fundstrust (Pty) Ltd (In Liquidation) v Van Deventer [1997] 1 All SA 644 (A); 1997 (1) SA 710 (A)
Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A)
Jaga v Dönges NO and another 1950 (4) SA 653 (A) F
Mitsui Petrochemical Industries v Solvay et Cie 1974 BP 24 (C of P)
The BM Group (Pty) Ltd v Beecham Group Ltd 1978 BP 373 (T)
View Parallel Citation
Judgment
HARMS JA
A patent application becomes available for public inspection, generally speaking, within 18 months from the date of