inevitable reversion to the commissioner of patents.
It can with some force be argued that the procedure of section 51(1) is necessary, as it provides for
advertisement and thus notice to the general public of the intended amendment. This argument loses its force
when regard is had to the provision in section 51(9) for a remission of the application to be dealt with in accordance
with subsections (2) to (8). It is to be accepted that advertisement will be ordered where the general public may be
affected (but not where, for example, the amendment sought is not substantial). The way of section 51(1) is
therefore not imperative to ensure advertisement where necessary.
It was pointed out that in several sections of the Act a clear distinction is drawn between "commissioner" and
"court". Section 76(1) and (2) are given as
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example. That is correct, but in this section which deals with appeals from the commissioner to the High Court it is
clear from the context that "court" is used in its defined (narrow) sense.
Section 51(10), which provides that an amendment may be allowed by the commissioner or a court can in the
context only refer by the latter to a court of appeal.
The fact that section 51(3)(b) provides that applications "shall be dealt with by the commissioner", and does not
refer to the court of the commissioner of patents, does not take the matter further. The commissioner sits as a court
and is in fact a special court.
It was emphasised that there are other sections in the Act in which references are made to commissioner and to
court and that in none of them is the word "court" used synonymously with commissioner. When application is made
to the commissioner the Act always refers to "commissioner" and never to a "court". The sections are, for example,
sections 28(1), 29(2), 49(6), 56(4), 61(3), 63, 66(4), 68 and 69(1) of the Act. This argument can be countered in the
same manner as that on section 51(3)(b).
It was also pointed out that several sections clearly distinguish between "commissioner" and "court". See, for
example, sections 51(10), 72(3), 73(2) and 74(1) of the Act.
I have dealt with section 51(10). In section 72(3) the words "a court" could conceivably include a magistrate's
court sitting in a criminal matter and thus falling outside the definition of section 2. The same reasoning applies to
the words "in all courts" in section 73(2). In the light of section 18 the reference to "the court" in section 74(1) is
probably according to the definition.
A comparison with the previous Patents Act 37 of 1952 is of some benefit. Section 36 of the old Act provided for
amendments, much as section 51 of the current Act does. But section 36(7) provided:
"No request for an amendment shall be allowed if, and as long as any proceedings for infringement or revocation of the
patent are pending."
This precluded applications for amendment directed at the registrar while proceedings were pending.
Section 37 of the 1952 Act provided, inter alia, as follows:
"(1)
In an action for infringement of a patent or proceedings for the revocation of a patent, the commissioner or the court
may by order allow the patentee, subject to certain terms as to costs, advertisement or otherwise as the
commissioner or court may impose, to amend his specification by way of disclaimer, correction or explanation ...
(2)
Notice of an application for any such order shall be given
(a)
to the registrar if the application is made to the commissioner; or
(b)
to the commissioner, if the application is made to the court,
and the registrar or the commissioner, as the case may be, shall have the right to appear and be heard before any order is
made on the application."
Thus, it is argued, under the 1952 Act it was specifically contemplated that infringement and revocation proceedings
might be pending before the commissioner, obviously sitting as a tribunal of first instance, or the court, obviously on
appeal, and that the commissioner or the court, as the case may be, may allow an application to amend the patent.
It was further specifically provided that notice of
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an application where the proceedings were pending before the commissioner, should be made to the registrar and
where the proceedings were pending before the court, should be made to the commissioner.
On the strength of these provisions counsel for the respondents argues that it must be assumed that the
legislature was aware of the provisions of sections 36 and 37 of the 1952 Act when it enacted section 51(9) of
the 1978 Act. In doing so, it removed the jurisdiction of the commissioner to entertain amendment applications
where proceedings are pending before him, but retained the jurisdiction of the court to entertain such applications
where proceedings are pending before it.
Clearly, so it is argued, the distinction having been made in the 1952 Act, the reference only to "court" in section
51(9) of the 1978 Act was intended to mean precisely that, namely "court" as defined in the definition section to
the exclusion of "the commissioner".