available at the date of the second patent.
The Act draws a clear distinction between "matter" and the claimed invention. "Matter", in general, refers to the
disclosure in the body of the specification that can support a claim, whether or not there is a claim based thereon.
The dichotomy between the invention claimed and matter appears from the following provisions in the Act: section
26(a), section 31(3), section 32(4), section 33(1)(b), (2), (3) and (8), section 51(5), (6) and (8) and section 61(1)
( f ). An illustration will explain why I have stressed the word "can". A specification may disclose two inventions, say
two new chemical compounds, A and B. The patentee may consciously or inadvertently claim A only, even though
the disclosed matter comprises A and B. He may subsequently amend his patent to claim both A and B, or to claim B
only (cf. section 51(6)). "Matter" may also be added by way of a supplementary disclosure (section 51(8)). It would
thus be wrong to equate the "matter" of section 25(7) with the claimed invention.
This brings me back to my earlier statement that the prior claim approach may lead to unacceptable double
patenting. If in the circumstances of this case CMI had done what the inventor in the example did and if Deton,
before the amendment, had claimed B, there would have been two valid patents, each with a claim B on the
register. It goes further. The same inventor could patent his invention twice and thereby effectively extend his
monopoly.
Section 1 has a definition of "priority date", but the definition is of limited scope because it is only the priority
date "in relation to any claim accompanying an application for a patent" that is defined. This wording bears no
resemblance to the wording used in section 25(7). In any event, the definition proceeds to state that the priority
date in that sense, unless the context otherwise indicates, means "the date specified in section 33 as the date
from which such claim shall have effect". It does not purport to define the priority date of "matter". Section 33
Page 574 of [1997] 3 All SA 569 (A)
was therefore designed to deal with priority dates of claims. Before its amendment in 1983 something to which I
shall return it did just that. There was no reference therein to the priority date of "matter". That is to be found, at
least implicitly, in section 31: it is, broadly stated, the date of application in a convention country,
View Parallel Citation
or the date of the provisional or of the complete specification, whichever is the earlier. The priority date of a claim is
the same as that of the matter on which it is fairly based. But that does not mean that unless matter is reflected in
a claim, it has no priority date. As a general rule, the priority date of a claim depends upon the preexisting or
coexisting priority date of the matter on which it is based.
It follows from this that there can hardly be any doubt that the Act as originally formulated, adopted the "whole
contents" approach. That brings me to the question whether the Patent Amendment Act 67 of 1983, in amending
inter alia section 33(1) of the Act, intended to replace the "whole contents" with the "prior claim" approach. It now
reads:
"33. (1)(a) Every claim of a complete specification shall have effect from the date prescribed by this section in relation to
that claim.
(b) The priority date of any matter contained in a complete specification shall be the same as that of the claim with the
earliest priority date in which that matter has been included: Provided that the priority date of any matter contained in a
supplementary disclosure in terms of section 51(8), shall be the date of the application for the amendment concerned."
Van Dijkhorst J held that (1) "(t)his means that only matter included in a claim is referred to in the context of priority
dates", reasoning that (2) "(i)t is the invention (and therefore the matter as set out in the claim) which requires a
date of commencement of its protection the priority date", and that (3) "(m)atter which is redundant to the claim is
not part of the invention and is in a sense irrelevant. It requires no priority date". I have already indicated with
reference to my examples that the reasoning in (3) cannot be sustained. The reasoning is further refuted by the
proviso to section 33(1)(b). Concerning (2), priority dates have nothing to do with the date of commencement of
protection because protection runs from the date of publication of the acceptance of the patent application (section
44(3)).
As to the first point, section 33(1)(b) is concerned with the priority date of matter in a complete specification and
not of matter in an application. It does not deal with the priority date of unclaimed matter the subject of the
present dispute. What the paragraph essentially does is to provide that the priority date of a claim cannot be
different from the priority date of the supporting matter. What the paragraph does not do is to provide that the
assumption in section 25(7) that matter has a priority date, is baseless. I have already indicated that such date can
be found in at least section 31(1). Accepting that section 33(1)(b) is not happily worded and that its object is not
immediately clear, it appears to have been introduced because of the amendments to the related provisions of
section 51(6) and (7) simultaneously effected by the 1983 Act.
As a footnote, it must, I think, be acknowledged that the Legislature in adopting the phrase "priority date of ...
matter" in section 25(7)(b) without at the same time providing a definition of that concept to parallel the definition
of "priority date" in relation to claims, created a problem for persons seeking to construe the section. These words
inevitably direct all but those who are forewarned to section 1 and section 33 of the Act. As is clear this is a
frustrating and
Page 575 of [1997] 3 All SA 569 (A)
fruitless exercise. It led Van Dijkhorst J to the conclusion that the subsection contained a "fiction".