Gentiruco AG v Firestone SA (Pty) Ltd [1972] 1 All SA 201 (1971 BP 58;
1972 (1) SA 589) (A) Referred to
369
Interfelt Products (Pty) Ltd v Feltex Limited [1972] 3 All SA 299 (1972 BP
294) (T) Referred to
360
Power Steel Construction Co (Pty) Ltd v African Batignolles Construction (Pty)
Ltd 1955 (4) SA 215 (A) Referred to
369
Selero (Pty) Ltd and another v Chauvier and another 1984 (1) SA 128 (A)
Referred to
363
Van Staden NO and another v Firstrand Ltd and another 2008 (3) SA 530 (T)
Referred to
371
Water Renovation (Pty) Ltd v Gold Fields of SA Ltd [1994] 2 All SA 33
(1994 (2) SA 588; 1993 BP 493) (A) Referred to
360
United Kingdom
Electrical and Musical Industries v Lissen [1939] 56 RPC 23 Referred to
369
Mond Nichel Company Ltd's Application for a Patent [1956] RPC 189 (PAT)
Referred to
362
The Mullard Radio Valve Company Ltd v Philco Radio Television (1936) 53 RPC
323 Referred to
363
Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10
Followed
363
Judgment
KGOMO J:
Introduction
[1] The applicant is the plaintiff in a pending patent infringement action against the first respondent (who is the
defendant therein) in this Court. The applicant ("patentee" or "applicant" interchangeably) is the registered
proprietor of the patent, it being a South African Patent number 2000/5613 ("the patent").
[2] In its plea in the infringement action, the first respondent denies infringing the patent and defends the action
on the basis, among others, that the patent relied upon by the applicant is invalid and, therefore,
unenforceable. The first respondent seeks the revocation of the patent in a counterclaim.
Page 357 of [2014] 1 All SA 355 (GNP)
The second respondent is not opposing this application. Consequently any future reference in this judgment
to "the respondent" is a reference to the first respondent.
[3] The applicant then launched this application in which it seeks an amendment of the patent. The respondent
raised an apprehension, speculative though, that apparently the applicant is launching this application for the
amendment of the patent in order to preempt some of the first respondent's ground which it intends to rely
on to ask for the revocation of the patent.
[4] It is so that in terms of section 51(9) of the Patents Act, 1978 (Act 57 of 1978), as amended, ("the Act"), since
the main action proceedings are pending before this Court, this Court has jurisdiction to hear this matter and
the applicant has the right to approach this Court to apply for the amendment of the patent.
[5] The first respondent raised several grounds of opposition to the amendment application. It originally
contended that:
5.1
the patentee has failed to provide full reasons for the amendment;
5.2
the amendment sought does not comply with section 51(6) and (7) of the Act; and
5.3
this Court should exercise its discretion to refuse the amendment sought on the basis that the
patentee has procrastinated or delayed culpably, in bringing the amendment application and has acted
mala fide in seeking to enforce the patent in the motion proceedings.
[6] Section 51 of the Act appears to be and is arguably the pivot prescript around which a decision in this matter
will revolve. As such it is in my considered view and finding that setting the material portions thereof upfront,
ie at this inception stage, the arguments, submissions and contentions from both sides would be understood
in their proper perspectives. The general title of this section of the Act is "Amendment of specifications".
[7] Section 51(9) of the Act reads as follows:
"(9)
Where any proceedings relating to an application for a patent or a patent are pending in any court, an
application for the amendment of the relevant specification shall be made to that court, which may deal with
such application for amendment as it thinks fit but subject to the provisions of subsections (5), (6) and (7), or
may stay such pending proceedings and remit such application for amendment to the registrar to be dealt with
in accordance with subsections (2), (3) and (4)."