[87] It was held in Deton Engineering (Pty) Ltd and another v JP McKelvey and others32 that an amendment may be
refused where there is objectionable conduct on the part of the applicant, for eg where there is:
". . . covetousness, ie where the patentee has knowingly and deliberately obtained and maintained claims of
unjustified width. In the end, it boils down to this : Is there such a lack of bona fides or conduct of such recklessness
that the court should not come to the assistance of the patentee."
[88] Knowledge of invalidity insofar as patents are concerned is a material requirement that can be and is often
used to determine whether the applicant acted with reckless abandon. It is so that it is very difficult to prove
"knowledge". At most occasions, this knowledge is inferred from the proven or admitted facts.
[89] Our courts have over the years held that "constructive knowledge" suffices to satisfy a "knowledge
requirement" required. In that light, a
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court would usually impute constructive knowledge where a litigant has unreasonably shut his eyes to the
truth by not heeding indicators of the truth.33
[90] It is thus the first respondent's case that the applicant, who is obviously an expert in matters relating to
patents, had available to it the means and the indicators that would have alerted it to the fact that in terms of
the Muira principles, claim 29 is invalid and has not done anything timeously to rectify the situation. That is the
reason the respondent submitted that:
". . . The applicant had therefore known, or it must be concluded it ought to have known (of this) (but decided to)
shut its eyes and declined to see what is perfectly obvious . . . "34
of the conceivable invalidity of claim 29, since at least May 1988, but nevertheless:
"60.1 sought to enforce that (invalid) claim against the First Respondent in an infringement action; and
60.2
when faced with a revocation action in which the invalidity of that claim is pleaded, then only sought an
amendment of it in order to 'obviate' a debate about its validity in the light of Miura;35 and
60.3
then intends to continue to rely on that amended claim for purposes of the alleged infringement."
[91] The first respondent finally submitted that the belated application to amend, which selfevidently prejudices
the first respondent is therefore not bona fide as it has been in addition unduly delayed and is indeed
"covetous".
[92] As already stated elsewhere in this judgment, the onus of establishing facts that would entitle a court to
refuse the amendment vests with the objector, in this case, the first respondent. 36 The court has absolute
discretion hereon.
[93] I have perused through the papers filed of record in this matter and could not come across any evidence
pointing to the patentee knowing or ought to have reasonably known, that an amendment was required
before the respondent filed its plea in the main action.
[94] On the other hand, the applicant concedes that it was aware of the existence of the Miura patent since 1988.
[95] However, it is also my finding that the fact that the applicant knew about the existence of the Miura patent
does not translate into the fact that it (applicant) knew beforehand or some long time back, that claim 29 of
the patent ought to have been amended in consequence of the disclosure in the Miura patent.
Page 372 of [2014] 1 All SA 355 (GNP)
[96] The above was demonstrated by the deponent of the applicant's founding affidavit when he stated the
following:
"It is simply impossible for the applicant to compare the disclosure of every one of the hundreds (if not thousands), of
patents cited against the applicant's patents in prosecutions around the world against every single claim of every
patent that the applicant files around the world. The magnitude of that task is beyond comprehension and certainly
beyond the capabilities of a single firm. The applicant was not aware that Miura was relevant to or affected the validity
of the patent in suit. Miura was not cited against the US patent which is equivalent to the patent in suit."37
[97] The applicant was at all times adamant that it was not aware of the invalidity of the patent until it was
advised to amend it by attorneys Spoor and Fischer.
[98] I have also evaluated and checked the allegations that the applicant ought to have known or had
constructive knowledge that the patent required amendment in the light of the Miura patent and am not
convinced that that is the case.
[99] There is evidence that despite a thorough search and examination involving no fewer than 43 patents
identified as relevant by a US examiner, the Miura patent was not cited as a patent which was relevant to the
US patent equivalent to the patent in suit here. On the contrary, the examiner in fact allowed the US patent
to proceed to grant in a form which included claim 29 in exactly the same form in which it appears in the
patent in suit. Furthermore, before the action proceedings against the first respondent were instituted, the
applicant obtained an opinion from Spoor and Fischer Attorneys regarding the validity of the patent and was
informed that the patent, and in particular, claim 29 was valid in its preamendment form.
[100] I have perused the first respondent's arguments and submissions around the above aspect and have come to
the conclusion that the applicant's point of view stands unaffected by the first respondent's objections and
contentions. I am persuaded that up to the moment the first respondent filed its plea and counterclaim in the
action proceedings, the applicant was not aware of any invalidity to the patent. Upon same being brought up