revocation in a lack of novelty, there may be no need to make a ruling on whether the patent in suit is invalid
for want of an inventive step. Lest I be mistaken in my finding that the patent has been anticipated, fairness
to the parties dictates that I should still come to a decision on the matter.
[126] Lack of inventiveness is a ground for revocation under the Act by reason of the provisions of section 25(1), (6)
and (10) read with section 61(c) of the Act. The cumulative effect of these provisions is that an invention is
only patentable if it involves an inventive step. And an invention shall be deemed to involve an inventive step
if it is not obvious to a person skilled in the art, having regard to any matter which forms, immediately
Page 420 of [2009] 1 All SA 381 (T)
before the priority date of the invention, part of the state of the art. In the application of these provisions to a
particular case it is necessary to determine what the art or science to which the patent relates are, who the
person skilled in the art is, and what the state of the art at the relevant date was. Thereafter the following
inquiries should be made:
1.
What is the inventive step said to be involved in the patent in suit?
2.
What was, at the priority date, the state of the art (as statutorily defined) relevant to that step?
3.
In what respect does the step go beyond, or differ from, that state of the art?
4.
Having regard to such development or difference, would the taking of this step be obvious to the skilled
man? (EnsignBickford (SouthAfrica) (Pty) Ltd and others v AECI Explosives & Chemicals Ltd 1999 (1) SA 70
(SCA) [also reported at [1998] 4 All SA 453 (A) Ed] at 7980; and Mölnlycke AB and another v Procter &
Gamble Ltd and others (5) (1994) RPC 49 (CA) at 115).
[127] The opinions of experts that a step is either obvious or not obvious are immaterial. Expert evidence is
admissible and relevant only in respect of the nature of the step claimed to have been inventive, the state of
the art as at the priority date relevant to that step, and the respect or respects in which the step goes
beyond or differs from that state of the art (Schlumberger Logelco Inc v Coflexip SA 2003 (1) SA 16 (SCA) [also
reported at [2002] JOL 10174 (SCA) Ed] at 27FI).
[128] The defendants contend that the plaintiff's claim to an inventive step is confined to that made in his expert
summary in terms of rule 36(9)(b) as confirmed by his oral testimony. In paragraph [11.3] he affirmed that he
would testify "that the inventive step over the aforesaid state of the art is a system for the purchase of
enabling codes including remotely identifying the subscriber from details in a subscriber database". Mr Bowman
submitted that a proper reading of that statement means the plaintiff excluded from his definition in the
summary of his inventive step the whole issue of the enabling code as a separate feature. As the plaintiff saw
it then, the inventive step was simply a method of making the enabling code available by remotely identifying
and verifying the subscriber from a database. To avoid any doubt, the defendants directed enquiries to the
plaintiff for further particulars for the purposes of trial in terms of rule 37(4) for the purpose of clarifying the
precise ambit of the dispute regarding obviousness. Paragraph [15] of the defendants' rule 37(4) notice
reads:
"Ad Paragraph 11 of the Plaintiff's Notice in terms of rule 36(9)(b)
(a)
Given, that, as appears from the plaintiff's 36(9)(b) notice, it is not a part of the plaintiff's case that the
enabling code of claims 1, 14 and 15 of the patent was not part of the state of the art prior to the priority date
of the patent in suit, are the defendants to understand that what is alleged to be the inventive step of the
patent is no more and no less than the ability to 'remotely identify the subscriber from details in a subscriber
database' in the event of any 'purchase' of enabling codes?
(b)
If not, what else is alleged to constitute the inventive step of the patent in suit?
Page 421 of [2009] 1 All SA 381 (T)
(c)
In any event, what is meant by the word 'including' in paragraph 11.3 of the plaintiff 's 36(9)(b) notice?"
"Paragraph 11.3 of the Rule 36(9)(b) summary is clear and succinct and the Defendants require no further
elucidation. The word 'including' bears its ordinary English meaning."
[129] The following exchange took place between the plaintiff and counsel during his initial crossexamination:
"Bowman:
Are you suggesting now that the enabling codes have something to do with your invention?
Plaintiff:
Enabling codes itself my lord, is a means of enabling the delivery of a product.
Bowman:
The enabling code has got nothing, as I understand your case, to do with your invention.
Plaintiff:
Excuse me, my lord, are you asking that if I invented the enabling code?
Bowman:
Yes.
Plaintiff:
No my lord, I did not invent the enabling code.
Bowman:
No, because we try to understand what you say about what it is that is the inventive step of your
invention, it does not include as we understand it, the enabling codes per se. It is a system for their
purchase that you claim to have invented.
Plaintiff:
My lord my inventive step was to create the system that would allow a user of a communication
network . . . to identify himself, to verify that subscriber, and then to issue him with, or provide to
him an enabling code or codes that would allow him to use a resource . . . and that was the inventive
step."