success.
In this Court, counsel for the plaintiff was invited to suggest precisely what the inventive step taken, was. While
I do not purport to give the ipsissima verba of his submission it came down to a suggestion that the inventive step
was the provision of the abrasive resistant outer part of the sandwichtype tube (and no
Page 464 of [1998] 4 All SA 453 (A)
more). This then poses a very simple inquiry and one which I consider can be addressed in the light of the broad
picture which has emerged from the evidence taken as a whole. Before doing so I should refer to the manner in
which the court a quo dealt with the matter. It posed, as the question to be answered, whether the invention was a
step forward from the mono tube with or without the waxed overbraiding. The learned judge held that, if regard
was had to the technical difficulties which the invention overcame (such as resisting abrasion, giving added strength
and an improvement on the waterproofing) coupled with the commercial success of the product, there was a real
step forward. It would seem to me, with respect to the learned judge, that there was in fact no evidence
suggesting technical difficulties in overcoming any of the suggested problems. To the further question then posed,
namely whether the step was obvious, the learned judge answered in the passage which has already been quoted
which concluded with the observation "everything has to be integrated to produce a product which is acceptable in
the market place". Here again, with respect to the learned judge, the question posed is not entirely appropriate nor
is the answer correct. The step forward was simply the provision of a more resistant
View Parallel Citation
outer coat. The manner of "integration" of that feature with the other features of the tube is not a part of the
invention.
The fact is that it was known that resistance to external damage could be improved by the provision of an outer
wrapping or by strengthening the outer coat by thickening the tube. It was known how to overextrude plastic
tubes and also to use overextrusion to provide protection for example in the manufacture of detonator cords. In
what respect then did the "step" go beyond or differ from that state of the art? It would seem to me not at all. But
even if it did, the further question arises namely, was such a step obvious? Once one is limited to a step which met
the need for protection of the outer surface of the tube of plastic material, the answer seems to me to be that the
solution must have been obvious to persons who would, in terms of the claim, in any event, be required to choose
and combine the plastic tube or tubes to be used to his satisfaction.
I thus find myself in disagreement with the finding in the court below. It follows that the claim for revocation on
the ground of lack of inventiveness must succeed and the appeal be upheld.
In matters of this nature it is customary for the court to afford the patentee an opportunity to apply for an
amendment which may save the patent (see Gentiruco case, supra, at 665 where reliance was placed in this
situation on the provision of section 54 of the 1952 Act. Section 61(3) in the present Act is in similar terms).
However counsel for the plaintiff made no application or request that this section be invoked. There, furthermore,
seem to me to be factors present which render a suspension of an order of revocation so as to allow an application
for amendment inappropriate. The first is that it seems an inevitable corollary of Dr Viljoen's evidence that the
specification is, at least in its failure to provide instruction as to how the balance between integers (c) and (d) is to
be achieved, insufficient. Since section 51 precludes a patentee amending this patent by introducing new matter it
is difficult to see how the patent could be improved. More important, however, is the fact that the patent has now
expired so that no amendment could in any event be applied for or be effective.
There are further matters with which I must deal. The appellant sought, in the event of success, an order for the
qualifying fees of its expert witnesses without specifying any particular witness. In my view there is, having regard
to the nature of the evidence given by the appellants' witnesses, no warrant for any such direction.
Page 465 of [1998] 4 All SA 453 (A)
The next matter is the form of the heads of argument filed by the parties. This Court had recently had occasion to
comment on the function and form of heads of argument (see Caterham Car Sales & Coachwork Ltd v Birkin Cars (Pty)
Ltd and another1 1998 (3) SA 938 at 955BF). The defendants' heads in this appeal cover 115 pages. The first 55
pages consist of a dissertation on the defences raised, the law, and a review of the evidence of witnesses. None of
this is related to any specific argument or contention to be made. As far as the only point upon which the appeal
has succeeded is concerned there is, in this part of the heads, a reference to an authority and a twoline
observation that the law on obviousness is trite and need not be repeated. In the remainder of the heads 5 pages
are devoted to this topic. These pages
View Parallel Citation
consist of a quotation from the document put to the witnesses (to which I have referred) and another
memorandum, and of summaries of what other witnesses have said. No process of reasoning is set out. I give this
only as an example. The same may be said quite generally about the heads.
The heads of the plaintiff also consist of lengthy quotations and a recital of facts which in themselves are of no
great assistance again with little mention of any process of reasoning directed to submissions to be made.
Attention is again directed to paragraph 38 in the Caterham judgment.