the patent. In limine my jurisdiction to hear this application is disputed.
On 20 June 1995 the applicants launched an application against the present respondents, in which they sought
an interdict under the patent. While the application for an interdict was pending, the applicants launched the
present application which is an application to amend the application, purportedly brought in terms of section 51(9)
of the Patents Act 57 of 1978.
The original notice of motion in this application to amend the patent was dated 21 September 1995. The notice of
motion has been twice amended. The notice of intention to amend was dated 26 February 1996 and it was followed
by a notice of amendment dated 19 March 1996. There was a further notice of intention to amend dated 26 August
1996, followed by a notice of amendment dated 4 November 1996.
The application for an interdict under the patent was subsequently heard by myself and dismissed on 18 October
1995. In respect of the amendment application I made the following order:
"In case number 89/4136 the application to amend SA Patent Number ZA89/4136 is postponed sine die and it is ordered that
it be advertised in the prescribed manner referred to in section 51(2) of Act 57 of 1978."
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The application to amend had elicited a notice of intention to oppose on 22 September 1995. The amendment
application in its original form was advertised in the Patent Journal of 25 November 1995. On 8 December 1995 the
respondents filed a notice of opposition in terms of Regulation 82 of the Patent Regulations of 1978.
The amendment application was amended by way of a notice of intention to amend, dated 26 February 1996 and
a notice of amendment dated 19 March 1996, as I have already mentioned. As a result of the amendment of the
notice of motion in the amendment application, the application was readvertised in the Patent Journal of 28 February
1996.
A notice of intention to amend, dated 26 August 1996 was followed by a notice of amendment, dated 4
November 1996. Before the lastmentioned amendment took effect and during September 1996 this last
amendment was again advertised. This is now common cause, although it does not appear from the papers. In view
thereof a point in limine pertaining to nonpublication was not persisted in.
A further point in limine that the first applicant had no locus standi is common cause. It is not a point of substance
but may be revisited when a cost order is considered.
The real point in issue is that the commissioner of patents has no jurisdiction to adjudicate upon this application
for amendment of the patent.
The amendment application was launched on a notice of motion. It was purportedly brought in terms of section
51(9) of the Patents Act. The stated reason for applying under section 51(9) to the commissioner under notice of
motion was that there was, at the time that the amendment application was launched, a pending application for an
interdict under the patent which, as I have mentioned, was dismissed by myself eventually.
It is submitted on behalf of the respondents that this amendment application under section 51(9) of the Act is
procedurally fatally defective in that the commissioner has no jurisdiction to entertain such an application in terms of
that subsection.
Section 51(9) of the Act provides as follows:
"Where any proceedings relating to an application for a patent or a patent are pending in any court, an application for the
amendment of the relevant specification shall be made to that court which may deal with such application for amendment as
it thinks fit, but subject to the provisions of subsections (5), (6) and (7), or may stay such pending proceedings and remit
such application for amendment to the Registrar to be dealt with in accordance with subsections (2), (3) and (4)."
It is submitted that the section has application only where proceedings are pending before a "court". The
application must then be made to that court. It is only that court which may deal with such application or remit such
application to the Registrar. Therefore it is submitted that only a "court" has jurisdiction to entertain an application
under section 51(9).
"Court" is defined in section 2 of the Act as follows:
"court, in relation to any matter, means the division of the Supreme Court of South Africa having jurisdiction in respect of
that matter."
It is pointed out on behalf of the respondents that no proceedings were pending before any division of the
Supreme Court of South Africa, nor was the amendment application made to a division of the Supreme Court of
South Africa. The
Page 397 of [1997] 4 All SA 394 (T)
application purporting to be made in terms of section 51(9) was made to the commissioner. At the time when the
amendment application was launched there were, of course, proceedings pending in relation to the patent before
the commissioner. That was the interdict application.
The commissioner is defined in section 2 of the Act as follows: "Commissioner means a commissioner of patents,
designated in terms of section 8".