better. It will assist if I repeat the learned judge's concerns. He said (at 105BF):
"[T]his would mean that the following would not be reviewable under section 51(10):
.
an application which is wholly in conflict with the prescribed manner or even the grant of an amendment on the oral
application of an applicant
.
an application where the nature of the amendment is not stated but left to the discretion of the Registrar
Page 85 of [1998] 3 All SA 77 (A)
.
where the application was not advertised at all or advertised wholly in conflict with the prescribed manner eg in the
Lowveld Advertiser only
.
where opposition is dealt with in material conflict with the prescribed manner.
Some of these examples may be a little farfetched, but none is inconceivable."
The answer to these illustrations is that, in each instance (and accepting for this purpose that the somewhat
extreme situations envisaged could arise), the remedy would be a commonlaw review. In the context of the Act as
a whole these examples do not have startling consequences. To illustrate with reference to the first. If a patent
application is made "wholly in conflict with the prescribed manner" or is "granted on an oral application", the public
has no statutory remedy similar to section 51(10). The only available remedy is a commonlaw review. Such
procedural defects do not provide a ground for revocation. The question can then be fairly posed whether
procedural defects in a patent application are of less consequence than those in an application for amendment. The
answer is obviously no. What would arise would not be whether the amendment was "in conflict with the section"
but whether the conduct of the registrar had been regular. This is how this Court viewed a comparable problem in
the case of Amalgamated Packaging Industries Ltd v Hutt and another 1975 (4) SA 943 (A)
View Parallel Citation
at 951D952B. Indeed one may speculate that it was the Hutt case coupled with a judicial suggestion in Aktie
Bolaget Astra Apotekarnes Kemiska Fabriker v Willows Francis Pharmaceutical Products Ltd 1959 (4) SA 1 (T) at 7D that
the reasons called for in section 36(1) of the 1952 Act need go no further than to describe the object as, for
example, "a disclaimer" that induced the legislature to add subsection (10) and to add the word "full" to amplify the
requirement for reasons.
There are two other suggestions which have been said, in the cases which adopted the approach favoured by
the court a quo, to support the court's view. In Brelko CC and another (supra) at 106CD it is said that under the Act,
in contrast to the 1952 Act, "it is no longer possible to oppose the grant of an application for a patent". Section 51
it was suggested "affords an objector the right and a means to oppose". This proposition is, with respect to the
learned judge, not easy to fathom. Section 23 of the 1952 Act permitted opposition to the grant of a patent on a
patent application on certain stated grounds but on no others. These limitations also applied in regard to revocation
in terms of section 43. The grounds of revocation in the present Act are similarly exhaustively defined. Inadequate
reasons for an amendment was not such a ground under section 23 (or section 43) of the 1952 Act and is not now
under section 61 a ground for invalidating a
It was this conclusion which gave rise to the comment in the case of ManDirk (Pty) Ltd v YaoChang Lin and others
1993 BP 479, that if the approach in the Brelko case were to be adopted, what would in effect have happened is
that a further ground of invalidity would have been introduced into the Act contrary to the provisions of section 61.
The court a quo said of this proposition (at 296HI) that the setting aside of an amendment does not result in
revocation of the The court also observed that "[the] patentee is not precluded from seeking a further amendment".
There are two comments to be made. The first is that to state that the setting aside of an amendment is not the
same as revoking a patent, while literally correct, is simply a distinction without a difference.
Page 86 of [1998] 3 All SA 77 (A)
Amendments are invariably sought in order to avoid an actual or apprehended attack on the validity of the patent
(see Willows Francis Pharmaceutical Products Ltd v Aktiebolaget Astra Apotekarnes Kemiska Fabrieker 1960 (3) SA 726
(A) at 737CD). Indeed counsel was unable to suggest any other circumstance which would lead to an application to
amend. The interest of an objector in an amendment lies in the effect of the amendment upon the monopoly, in
other words, whether the patentee by amending becomes entitled to a broader monopoly. That is an objective
question and involves a comparison between the unamended and amended specification. It must also be said that
it is the universal practice of courts when upholding a revocation application is to allow the patentee to apply,
within a determined time, for a suitable amendment so as to validate the otherwise invalid Revocation applications
may be made over the entire life of the patent and if the court a quo's order were to be upheld so too would any
attack on the patentee's reasons for an amendment with the consequential result that the patent would be
rendered invalid. This is the objectionable feature
View Parallel Citation
and this is why allowing such a procedure would in effect create an additional ground of invalidity not sanctioned by
section 61.
In the Brelko case (supra) it was also said that the reasons for the amendment given by the applicant "will be of
great importance when the possible objector has to decide whether to oppose or not. Whether the reasons given