Judgement: patent amendment after suspension of revocation order by Supreme Court of Appeal
4/05/2010

On 30 April 2010 Judge Murphy, sitting as the Commissioner of Patents for the Republic of South Africa delivered his judgment in the matter of Ausplow Pty Ltd vs. Northpark Trading 3 (Pty) Ltd and three others in the Court of the Commissioner of Patents.

The matter relates to an amendment of South African Patent No. 95/0812, the invention in respect of which relates to a seeding assembly, wherein Ausplow sought the amendment of a number of the claims of the patent in light of an earlier finding by the Supreme Court of Appeal that claim 1 of the patent was invalid for lack of an inventive step (obvious). The amendment application and other relief sought were opposed by three of the respondents who claimed that the amended claims 1 and 13 remained invalid for lack of an inventive step.

Judge Murphy relied on the earlier interpretations of the claimed invention at the time made by the original trial judge as well as the Supreme Court of Appeal. He further relied on the brief judgment handed down by the Supreme Court of Appeal in assessing various aspects of the patent, claimed invention and the validity and/or infringement of the claims prior and after amendment.

Judge Murphy found that the granting to the applicant of an opportunity to amend the patent by the Supreme Court of Appeal was not done in terms of Section 68 of the Patents Act but was made in terms of the inherent discretion of the Supreme Court of Appeal. As the order of the Supreme Court of Appeal stated that the revocation of the patent “is provisional” he also ruled that the patent was invalid from the date of order of the Supreme Court of Appeal and would remain so until validated by the discharge of the provisional order by the lower court granting the amendment.
On the question of inventiveness Judge Murphy ruled that no additional expert evidence was required and in order to assess inventiveness he isolated and so considered the two novel integers of the proposed amended claims. As the claimed advantages of the claimed combinations were not referred to in the specification, he ruled that to read these advantages into the specification would be to introduce new subject matter not in substance disclosed in the specification before amendment.

The original novel integer had previously been found obvious by the Supreme Court of Appeal which only left the additional novel integer to be assessed. Although Judge Murphy found that the relevant prior art document did not achieve the claimed advantage of the additional novel integer by the same means, he found that it would be achieved by other, but similar means in the prior art document. Accordingly he ruled that both novel integers in the amended claims were obvious and as a result the proposed amended claims were invalid.

In light of these findings the application to amend the specification of the patent was dismissed and the patent was finally revoked.
Danie Dohmen
Partner
danie@adamsadams.co.za