Section 8 of the Act in turn provides as follows:
"The Judge President of the Transvaal Provincial Division of the Supreme Court of South Africa shall from time to time
designate one or more judges or acting judges of that division as commissioner or commissioners of patents to exercise the
powers and perform the duties conferred or imposed upon the commissioner by this Act."
Proceedings before the commissioner are governed by section 18 of the Act which provides in subsection (1) as
follows:
"Save as is otherwise provided in this Act, no tribunal other than the commissioner shall have jurisdiction in the first instance
to hear and decide any proceedings, other than criminal proceedings relating to any matter under this Act."
It follows, so it is argued, that the Supreme Court, "the court" as defined, has no jurisdiction to hear, for example,
interdict applications. By virtue of section 18(1) of the Act no division of the Supreme Court has jurisdiction to hear
infringement proceedings. It is thus clear that where, for example, interdict proceedings are pending, they are not
pending before a "court". Thus far the argument.
In matters relating to patents the tribunals of first instance are therefore in nearly all matters the commissioner
of patents, and in the few criminal matters the criminal magistrate courts and high courts. In respect of the latter
chapter XV of the Patents Act 57 of 1978 is relevant.
As the definition of "court" in the latter Act excludes the lower courts, theoretically an application for amendment
of a patent can be brought in terms of section 51(9) in the High Court hearing a criminal charge "relating to the
application for a patent" in view of the wide meaning of the words "relating to". I doubt whether this was ever
intended. For practical purposes this contingency is too remote to contemplate.
The appeal tribunal against the decisions of the commissioner of patents in patent matters is in terms of section
76 clearly a "court". Should the argument be correct it follows that for practical purposes section 51(9) can only
have effect on appeal. It would, however, be a rare occurrence for an amendment to be dealt with on appeal and
still more unusual for the appeal to be stayed, pending an application for amendment in terms of section 51(2). It
would appear anomalous that the drafters of the Act would provide for amendments pending appeal procedures
but not for amendments pending proceedings before the commissioner of patents which is the stage when
amendments would normally be required. In fact, it is a sound principle as set out in section 51(9) that the tribunal
hearing the patent matter should also deal with applications for amendment and there is no sound reason for not
applying it to hearings before the commissioner of patents.
These considerations cast a doubt over the respondent's interpretation of section 51(9). That interpretation
wholly depends upon the meaning of "any court" in the subsection. It has to be emphasised that the definition set
out in section 2 of the Act pertains only "unless the context otherwise indicates".
In the broader context it must be stressed that the tribunal of the commissioner of patents is known as the court
of the commissioner of patents. It is referred to by
Page 398 of [1997] 4 All SA 394 (T)
that name in the regulations (see for example Regulation 79 and the heading of Chapter III) and by the Appellate
Division (see for example Roman Roller CC and another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A) 409IJ)
and in section 29(3)(b) of the Copyright Act 98 of 1978. In addition a high court judge presides as commissioner, the
procedure is largely that of the high court and the headings of all pleadings (and even counsel's heads of
argument) refer to the court of the commissioner of patents.
One's first reaction upon reading section 51(9) is therefore to think of the court of the commissioner of patents.
One would in fact be in good company. In a number of reported decisions the commissioner of patents has dealt
with amendments to patents during pending proceedings without objection to his jurisdiction under section 51(9). I
was referred by Mr Franklin for the respondents to a number of them. They are Barmac Associates Ltd v SA Dynamics
1991 BP 16 (CP), Water Renovation (Pty) Ltd v Goldfields of SA Ltd 1991 BP 26 (CP), Martin Johnson (Pty) Ltd v Crouch
Footware CC and others 1991 BP 60 (CP), Dantex Explosives (Pty) Ltd v Sasol Chemical Industries (Pty) Ltd 1992 BP
265 (CP), Water Renovation (Pty) Ltd v Goldfields of SA Ltd 1994 (2) SA 588 (A) and Johnson & Johnson Baby Products
Co and another v Kimberley Clark of SA (Pty) Ltd 1987 BP 52 (CP). However, in General Electric Co v De Beers Industrial
Diamond Division (Pty) Ltd 1986 BP 359 (CP) the legal advisors for the patentee merely sought a stay of proceedings
before the commissioner of patents in terms of section 51(9), pending amendment proceedings under section 51(1).
On the argument for the present respondents this approach would also have been wrong, as only a court could
be approached for that relief under that subsection.
I have set out the broader context. I will now deal with the narrower context of the Act itself. Section 51(1) gives
an applicant for a patent or a patentee the right to apply��for an amendment of the relevant specification. Should
there be opposition to the amendment, section 51(3)(b) provides that it be dealt with by the commissioner. It is not
unusual that amendments are applied for during pending proceedings for infringement or revocation. One would
therefore expect that the Act would provide for that contingency and do so in the section which deals with
amendments, namely section 51. In fact, section 51(9) does deal with pending proceedings and in the manner one
would expect.
There is, apart from the definition of "court", no logical reason to limit section 51(9) in the sense contended for. It
would create an unwarranted lacuna in the Act. The interpretation contended for would bring about the anomaly
that whereas opposed applications for amendment of patents must be heard by the commissioner of patents,
where there are pending proceedings before him such applications may not be introduced there but must follow the
circuitous route of section 51(1) with no provision for notice to the other party (except the advertisement) and the