permit amendment, at least to the extent of deleting the existing invalid claim unless the conduct of the patentee has
been such that the court in the exercise of its discretion thinks that he should be refused such relief."
[28] The conduct of an applicant for an amendment that might militate against the grant of an amendment includes
undue delay in the moving of the amendment which delay prejudices or is potentially prejudicial to the
respondent; as well as mala fides in seeking the amendment.
[29] This Court is also called upon to investigate the issue of delay in moving for the amendment as well as the
presence (or absence) of mala fides in that regard.
Whether proposed amendment complies with section 51(6) and (7) of the Act
[30] The respondent advances three factual bases that according to it are indicative of the fact that, or that if the
amendment is allowed:
30.1 it would introduce new matter or matter not in substance disclosed in the specification of the patent
prior to the amendment (new matter");
30.2 the specification as amended would include a claim not fairly based on matter disclosed in the
specification of the patent prior to amendment ("fair basis"); and
30.3 the specification as amended would include a claim not wholly within the scope of a claim included in the
specification of the patent before the amendment.
Page 362 of [2014] 1 All SA 355 (GNP)
"'Fair basis' requirement"
[31] The object of the requirement of "fair basis" in section 51(6)(b) of the Act was explained as follows in
Bateman7 by Harms JA:
"It is a basic requirement of patent law that a patentee is not entitled to claim more than he has disclosed and
identified as the invention in the specification. That does not mean that the claim may not extent beyond the
examples or embodiments disclosed, but only that the claim may not be for something not covered by the general or
generalised disclosure of the invention. . . . Transposed to the amendment stage, and taking into account that the
effect of an amendment is retrospective, the object of s 51(6)(b) is to prevent an inventor from claiming ex post
facto something not contained in his original disclosure which has become available for public inspection. The previous
Patents Act 37 of 1952, for instance, had a substantially identical requirement (s 36(3)), namely, that the amended
claim had to be limited to matter disclosed in substance in the original (cf Ethyl Corporation's Patent [1972] RPC 169
(CA) at 195. In that judgment the point was made that the provision should be interpreted in a broad common sense
way (at 192 line 23) and that it should be given a liberal interpretation so as to permit any fair amendment which has
already in substance been disclosed (at 195 line 9)."
[32] The above in my view comes down to the fact that one can change a patent, but one cannot widen one's
monopoly. Similarly, a conclusion may be inescapable that a claim need only be in line with the general
teaching of the specification and may indeed go beyond the specific teaching in the patent's examples and
embodiments.8
[33] In considering whether the claim is fairly based on the disclosure in the patent, the court need only be
satisfied that the new part or "integer" sought to be introduced into the claim by the amendment:
33.1 can be said to have been broadly described in the body of the specification prior to amendment;
33.2 is not inconsistent with the body of the specification prior to amendment; and
33.3 does not relate to a feature about which body of the specification is wholly silent.9
[34] Harms JA in Bateman was of the view that the above requirements and the enquiries made pursuant thereto
may all amount to the same question in different forms.10
New matter requirement
[35] Similar considerations underlie the requirement that an amendment may not add new matter. T h i s
requirement has its genesis in the United Kingdom ("UK"). The objection to adding new matter in the UK is
based on article 123(2) of the European Patent Convention which provides that:
"A European patent application or a European patent may not be amended in such a way that it contains subject
matter which extends beyond the content of the application as filed."
Page 363 of [2014] 1 All SA 355 (GNP)
[36] The English judge in Vector Corp v Glatt Air Techniques Ltd11 elaborated on these aspects of the test to be
applied, drawing various statements of principle from earlier cases, especially at paragraphs 4 and 5 of that
judgment.
[37] The learned Justice put it as follows in paragraph 4 of the judgment:
"[4]
In RichardsonVicks' Patent [1995] RPC 566 at 576, I summarised the rule in a single sentence:
'I think the test of added matter is whether a skilled man would, upon looking at the amended
specification, learn anything about the invention which he could not learn from the unamended
specification.'"
[38] When one looks critically at the facts and circumstances of or in this application, it is my view and finding that
the above excerpt from the Vector Corp case speaks to the facts and circumstances in our present case.