wherein each card receiving compartment comprises a plate member that includes a bevelled surface located on the
same side of the plate member in each compartment, with the position of the rack assembly, relative to the cards
being delivered by the card transporting mechanism, being selected by a microprocessor, and wherein the cards are
emptied from the compartments into a card receiver by a card unloading pusher."
[15] A closer scrutiny of the abovementioned proposed amendment in my view point to similarities that may even
point to them being part of a genus. However, that is not what we are dealing with.
Reasons tendered for the amendment
[16] It is accepted practice that there is no statutory duty or obligation on a patentee to provide reasons for
seeking an amendment to a patent in circumstances, as in this case, where revocation proceedings relating to
the patent are pending.
[17] Harms JA confirms the above point of view as follows in Bateman Equipment Ltd and another v Wren Group (Pty)
Ltd1 ("Bateman"):
"If during the course of litigation concerning the patent an application for amendment is made, the Court usually is
aware of the reasons for the amendment. To require in those circumstances a setting out of full reasons could be
Page 360 of [2014] 1 All SA 355 (GNP)
unnecessary and formalistic. This does not mean that, depending upon the circumstances of any particular case, the
Court should not be informed of the patentee's reasons or that the reasons should not be full (cf De Beers Industrial
Diamond Division (Pty) Ltd v General Electric Company 1988 (4) SA 886 (A) at 895GJ). . . . under ss (9) reasons are
not a jurisdictional requirement and a failure to give sufficient reasons can at most be a factor which a Court may
take into account in the exercise of its discretion to refuse an amendment which is otherwise in accordance with ss
(9). In this instance, the onus is on the objector to make out a case that the paucity of reasons is such that the Court
should exercise its discretion against the patentee."
[18] I agree with the above court's reasoning: Upon reading the papers filed herein of record, I dare say I could
d e d u c e w h a t t h e rationale is for this application to amend the patent. In its answering affidavit the
respondent baldly contended, without further explaining itself, that:
". . . the paucity of reasons is such that the court should exercise its discretion against the patentee."
[19] The respondent proffered the above complaint in spite of the applicant having given reasons why it was
making the application for the amendment of the patent.2
[20] As Bateman clearly and unambiguously stated, the onus is on the respondent to make out a case that the
paucity of reasons is such that the court should exercise its discretion against the patentee.
[21] The founding affidavit gives reasons for the amendment, which can be summarised as follows: The patentee
seeks to limit the claims of the patent in order to limit the scope of the invention claimed in claim 29 in the light
of the disclosure in US patent 3,588,116 ("the Miura patent") cited by the respondent in the action
proceedings in support of its attacks on the patent on the ground of lack of novelty or anticipation as well as
lack of inventive step or obviousness.3 The other reason is given as to reduce the scope of the action
proceedings by eliminating certain of the grounds of attack relied upon by the respondent in those
proceedings relating to the validity of the patent.4
[22] On the face of it, it is the respondent who did not make out a case for the absence of cogent reasons for the
amendment as required.
[23] The respondent acknowledges the incidence of the onus on it when it states in its heads of argument:
"5.
There is a split onus in amendment applications. The applicant for amendment must prove compliance with the
statutory formal prerequisites and the objector must prove substantial grounds of objection."5
[24] The respondent, however, went on to attempt to shift the onus by referring to what was said among others
in Water Renovation (Pty) Ltd v Gold Fields of SA Ltd 1993 BP 493; 1994 (2) SA 588 (A) at 502D503B (or at
Page 361 of [2014] 1 All SA 355 (GNP)
594BE) (SA) [also reported at [1994] 2 All SA 33 (A) Ed] wherein the court held among others as follows:
". . . in relation to some of the issues the onus rests on the applicant for amendment, while in relation to others it
rests on the objector. For instance, where the objection to an amendment is based on the ground of continuing
invalidity of the patent, it would seem that the onus lies with the objector but, on the other hand, where the issue is
whether there has been due compliance with the statutory requirements for the application (for example as to the
furnishing of 'full reasons' for the amendment) and a factual dispute arises in that connection, it is arguable that the
patentee bears the onus."
[25] For obvious reasons, this Court will follow the decision of Bateman than the 1993 decision quoted or relied
upon by the respondent.
[26] What I can categorise as something of a general rule in applications of this nature is that an amendment will
usually be permitted unless the conduct of the patentee has been such that the court, in the exercise of its
discretion, considers that the amendment should be refused.
[27] This is what was stated in Interfelt Products (Pty) Ltd v Feltex Limited6 where the court said the following:
"The grant or refusal of an amendment will depend on many factors, including compliance with the statutory
requirements and the conduct of the patentee. . . . I have always understood that a court will normally be inclined to