(8)
An invention used secretly and on a commercial scale within the Republic shall also be deemed to form part of the
state of the art for the purposes of subsection (5)."
Page 572 of [1997] 3 All SA 569 (A)
In finding that the descriptive part of CMI could not destroy the novelty of Deton, Van Dijkhorst J held that the
object of section 25(7) was to avoid double patenting; that only claimed matter can have a priority date (relying on
section 33(1)(b) with which I deal later), and that the reference to "the priority date of the matter" in section 25(7)
was a reference to the priority date of the claims of the prior patent (in this case, CMI). Consequently, he found that
in order to anticipate the invention claimed in Deton, it had to be found in the claims of CMI.
The Patents, Designs, Trade Marks and Copyright Act 9 of 1916 in its original form had no provision relating to
double patenting. During 1947, however, section 27(1)(h) was added as a ground of opposition (and revocation),
namely
"that the invention has been claimed in any complete specification for a Union patent which, though not available to public
inspection at the date which the
View Parallel Citation
patent applied for would bear if granted, was deposited pursuant to an application for a patent which is or will be of prior
date to such patent."
The definition of "n e w" in section 1 of the Patents Act 37 of 1952 was to a similar effect. An invention was not new
if
"(e)
claimed in any complete specification for a Union patent which, though not available to public inspection at the
effective date of the application, was deposited pursuant to an application for a patent which is, or will be, of prior
date to the date of any patent which may be granted in respect of the said invention."
The latter provision did not prevent all double patenting. There were special circumstances of the facts in Mitsui
Petrochemical Industries v Solvay et Cie 1974 BP 24 (C of P); there was the fact that prior claiming could not be
raised in relation to specifications available to public inspection before the effective date of the application (Beecham
Group Ltd v The BM Group (Pty) Ltd 1977 BP 14 (C of P); The BM Group (Pty) Ltd v Beecham Group Ltd 1978 BP 373
(T) 392D395B); there was the case of dependent patents (section 49), and, related thereto, selection patents (BM
Group (Pty) Ltd v Beecham Group Ltd 1980 (4) SA 536 (A) 558CE).
It is not without significance that while the Legislature in the quoted provision of the repealed Acts explicitly
directed the inquiry to a comparison between the (claimed) invention and the prior claims, there is no reference to
the prior claim in the current section 25(7). Instead, it refers to matter. Additionally, the 1952 Act deals with the
claims of the "complete specification" whereas section 25(7) is concerned with the matter "contained in an
application ... for a patent".
An application for a patent is made on a prescribed form and must comply with the provisions of section 30. In
particular, it must be accompanied by either a provisional or a complete specification ( section 30(1)). A provisional
specification must describe the invention fairly (section 32(2)). It does not have to have claims, it need not describe
the invention fully, or disclose the invention fully nor the best method these are requirements for a complete
specification (section 32(3)). What becomes open to public inspection after the acceptance of a complete
specification, is the patent, the "application" and all documents lodged in support thereof (section 43(1)).
Section 25(7) uses the "application" as the point of reference. It is not concerned with the validity of the first
patent in the sense that even if the first patent is invalid, whether revoked or not, it can still be cited under
subsection (7) against the later patent. So, too, can a lapsed patent application (section 42(3) read with
Page 573 of [1997] 3 All SA 569 (A)
section 43(3)). Selection patents are presumably still permissible.5 Dependent patents are sanctioned (section 55).
It is therefore an oversimplification to say that the object of section 25(7) is to prevent double patenting. The
object is rather to extend the scope of the "state of the art" beyond that defined in subsection (6), as does
subsection (8). In the result double patenting may be prevented by the application of subsection (7), but whether it
does so, depends upon the circumstances of the case. Any other construction renders subsection 7(a) redundant,
because, if the object were the
View Parallel Citation
prevention of double patenting, there would be no reason to have regard to matter contained in the "application"
and not limit the inquiry to the matter claimed in an accepted complete specification open to public inspection. I
therefore conclude that the learned Commissioner's point of departure relating to the objection of subsection (7)
was not correct. On the contrary, as would appear later, his interpretation can give rise to unacceptable double
patenting while the whole contents approach by its very nature prevents such double patenting.
Section 25(6) defines the state of the art to comprise "matter", and "matter" may be "a product, a process,
information about either, or anything else". This matter must have been made available to the public. Subsections
(7) and (8) qualify subsection (6) the latter extends the state of the art to include use of an invention not available
to the public, namely secret use on a commercial scale within the Republic. Subsection (7) is to a similar effect,
extending the state of the art for purposes of novelty to "matter" in context, "information" also not publicly