For present purposes attention must be directed to the fact that the section deals with the amendment of
specifications which have not become open to public inspection, and to specifications which have become open to
public inspection. Only the latter need be advertised. Although subsection (3)(a) is not in terms so restricted the
public can, in the nature of things, only become involved as objectors in the latter case. Where opposition is
entered it is the Commissioner and not the registrar who determines whether the amendment is to be allowed.
Amendments allowed by the Commissioner may not be set aside in terms of section 51(10). What the registrar
deals with is unopposed amendments and amendments at a stage when the public is not involved (subsection (4)).
Attention must also be directed to subsections (5), (6) and (7) which repeat or preserve the limitations found in the
earlier Act 9 o f 1 9 1 6 (section 47(8)) a n d A c t 37 of 1952 (section 36(3)) as to the permissible scope of
amendments. In short, no amendments may be made which would (i) introduce new matter or matter not in
substance disclosed in the specification before amendment and (ii) no claim not fairly based on matter disclosed in
the specification before amendment or (iii) include a claim not wholly within the scope of a claim in the patent before
amendment. These limitations are fundamental to the scheme of the Act as I will later show. They are designed
View Parallel Citation
to ensure that a patentee may not obtain a priority date (that is the date from which a claim is to have effect) to
which he is not entitled and may never broaden his monopoly after his invention has been made known to the
public by public disclosure. Any amendment allowed in breach of these provisions would, it is clear, be an
amendment made in conflict with the provisions of the section. What is new in the section as compared with the
repealed Act, is subsection (10).
It will be convenient first to dispose of the second amendment. Clearly an application once granted cannot be
retrospectively withdrawn. But the real reason why this amendment must be set aside is that it is simply not
competent in terms of section 50(1)(b). What was sought was not an amendment of a document for the amending
of which no (other) express provision is made in the Act and the amendment (whatever its other shortcomings) fell
to be set aside for that reason. It did not, because of what it sought to achieve, become an application for an
amendment in terms of section 51. It could not therefore be brought within the special jurisdiction created by
subsection (10) which relates only to amendments in conflict with the provisions of that section. The result is
perhaps illustrative of a question to be dealt with later, namely, how does the Commissioner or the court on an
appeal deal with the obvious irregularity which occurred? The answer would seem to be by way of commonlaw
review. The further question would be how this would affect the third amendment. Since the third amendment was
sought only on the basis that the second had
Page 84 of [1998] 3 All SA 77 (A)
eliminated the first, it too will have been irregularly allowed. As it is what was sought to be achieved by the use of
the second barrel was the resurrection of what after the second amendment was hoped would have been blown
away by the first barrel that is the withdrawal of the first amendment. In truth, the second application did not
seek to amend the specification at all it sought to amend the reasons given for the first amendment. There is no
provision for this under section 51. But whatever the position in this regard, the third amendment enjoyed no
separate life. It was wholly dependent on the second amendment.
However, neither amendment need be further discussed because counsel for the appellant (recognising the
difficulties) abandoned the appeal against that part of the court's order which set aside the second and third
amendments. In the light of that abandonment that part of the order of the court a quo must stand.
This opens the way for a consideration of the court a quo's interpretation of section 51 and in particular section
51(10). The court, as I have stated, held that noncompliance with subsection (1), (which stipulates that in making
an application in the prescribed manner the application must set out the nature of the proposed amendment and
furnish full reasons therefor), could be raised and, if the reasons were found wanting, the Commissioner may set
aside the amendment. This is contrary to the conclusion reached in the three decisions referred to at 295F296E of
the reported decision all of which held, in essence, that the reasons and the fullness of paucity thereof were
matters for the registrar and that section 51(10) did not create a jurisdiction for the reconsideration of such
reasons after the grant of an amendment. The underlying rationale of these decisions is
View Parallel Citation
that section 51(10) is concerned with the substance of the amendments and not with procedural requirements. In
effect what these decisions come down to is a conclusion that section 51(10) constitutes a selfcontained means of
control to ensure that amendments as such comply with the substantive requirements of the section.
Two reasons are given by the court a quo for rejecting this approach. The first is that such a conclusion ignores
the "clear wording of s 51(10)" (at 296EG). This is based, in the main, on the fact that the section refers to "any
amendment". It was reasoned that "any" being an "indefinite term which includes all of the things to which it
relates" therefore included objections to procedural steps taken in the past. This proposition in my view, focuses
undue attention on the word "any" and ignores the dominant phrase in the subsection namely "in conflict with the
provisions of this section". The apparent width introduced by the word "any" of itself takes one nowhere. One must
examine the section to determine what amendments would conflict with the provisions thereof. As I have already
pointed out the only amendments which could be said to do so would be amendments going beyond the stated
substantive limitations.
The court a quo next sought support for its views in examples offered by Van Dijkhorst J in Brelko CC and others v
HansOtto Schwarze and others 1991 BP 100, which are said to illustrate "startling" consequences. This fares no