the application. During that time a conflicting concurrent patent application may be filed by the same or another
inventor. The question that arises is the extent to which the validity of the later patent application is affected by the
earlier application, bearing in mind that it was not available to the public on the date of the later application.
View Parallel Citation
In the socalled Banks report1 the following was said in this regard (para 304306):
"304 There are two basic approaches to the problem. The first, which for convenience we shall refer to as the 'prior claim'
approach, depends upon a comparison of the claims of the later application with the claims of the earlier. The second, which
we refer to as the 'whole contents' approach depends upon a comparison of the claims of the later application with the
disclosure or contents of the earlier one.
305 The philosophical approach is different in the two cases. The prior claim approach is based upon the premise that the
Crown cannot grant the same monopoly twice and since the monopoly is delineated by the claims it should be the claims of
the two conflicting applications which are compared, and then only when a patent has been granted on the earlier
application. With this approach it does not matter that the invention claimed in the later claim has already been disclosed,
but not claimed, in the earlier application.
306 The philosophy behind the whole contents approach is not only that the Crown should not grant the same monopoly
twice but also that it is against the public interest to grant a patent for subject matter which has already been publicly
disclosed in an earlier application, notwithstanding that the disclosure was not public until after the priority date of the later
application or that no patent may be finally granted on it. In other words, only the first person to take steps to disclose such
subject matter to the public by means of a patent application has the right to a monopoly for it."
The Banks Report opted for the "whole contents" approach and recommended that the state of the art against
which the novelty and obviousness of an invention claimed ought to be judged should include the contents of prior
complete specifications published on or after the priority date of the invention in suit (para 340). According to the
Strasbourg Convention2 any member of that convention could adopt either approach. The European Patent
Convention accepted, in relation to European patents, the "whole contents" system in a diluted form. In particular,
it does not apply in relation to obviousness. The limitations concerning novelty are technical and largely the result of
the peculiar nature of European patents.3
Page 571 of [1997] 3 All SA 569 (A)
The British Patents Act 1977 was promulgated in the context of the Banks Report and the United Kingdom's
accession to the European Patent Convention. Also relevant is the fact that the 1949 Patents Act, in relation to prior
claiming, had "bred highly recondite judicial decisions" (Cornish, Intellectual Property: Patents, Copyright, Trade Marks
and Allied Rights, 2nd ed, p 120; cf. Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) 653CD). The 1977 Act
did not follow the mentioned Banks recommendation concerning obviousness. It is, however, said that the "whole
contents" approach was adopted in relation to novelty (e.g. by Cornish loc. cit.) but whether that view is correct,
depends upon an interpretation of the British Act, something I
View Parallel Citation
decline to do in the absence of judicial authority (cf. Fundstrust (Pty) Ltd (In Liquidation) v Van Deventer4
1997 (1) SA 710 (A) 731H732E).
The South African Patents Act 57 of 1978 is in some respects the same or similar to the British Act, but differs in
other respects textually, if not materially. Van Dijkhorst J, sitting as Commissioner of Patents, found that our Act
adopted the prior claim approach, and it is especially against that finding that the appellants appeal with his leave.
Van Dijkhorst J interdicted the third appellant from infringing the claims of patent ZA 90/5999 owned by the first
respondent. I shall refer to this patent as the Deton patent. The sole defence to the infringement application
persisted in is that certain claims of Deton lack novelty. The only prior art relied upon is that contained in patent ZA
89/4136, owned by the second respondent and hereinafter referred to as the CMI patent. Both patents are
concerned with methods of producing wearresistant inner linings for pipes.
It is undisputed that the invention claimed in claims 1, 2, 4, 5 and 7 of Deton is disclosed in the body of the CMI
patent specification. The priority date of CMI precedes that of Deton, but it became open to public inspection only
after the Deton priority date.
An invention, to be patentable, must be "new" within the meaning of that term in the Act. Section 25 provides in
this regard the following:
"(5)
An invention shall be deemed to be new if it does not form part of the state of the art immediately before the priority
date of any claim to that invention.
(6)
The state of the art shall comprise all matter (whether a product, a process, information about either, or anything
else) which has been made available to the public (whether in the Republic or elsewhere) by written or oral
description, by use or in any other way.
(7)
The state of the art shall also comprise matter contained in an application, open to public inspection, for a patent,
notwithstanding that that application became open to public inspection on or after the priority date of any claim to that
invention, if
(a)
that matter was contained in that application both as lodged and as open to public inspection; and
(b)
the priority date of that matter is earlier than that of the relevant claim.