The court of the commissioner of patents, seated in Pretoria, has handed down judgment in the matter of Sasol Dyno Nobel (Pty) Limited v African Explosives Limited. The court had to decide whether, in patent infringement actions, the reliance by a defendant on an allegation that a patent includes claims made in conflict with the provisions of Section 51 of the Patents Act no. 57 of 1978 constitutes a competent defence.

An action for the infringement of South African patent number 1991/2194, entitled “Low energy blasting initiation system and surface connection therefore”, as twice amended, was instituted by Sasol against African Explosives. In response to the action, African Explosives counterclaimed for the revocation of the patent on the basis of its alleged invalidity. In its defence, and as a basis for the counterclaim, African Explosives relied, inter alia, on the inclusion in the patent of claims introduced by way of amendment to the patent. These amendments were alleged to have been made in conflict with the provisions of Section 51 of the act.

Sasol filed an exception to this defence, in essence objecting to the alleged inadmissible claim amendments as a basis for its defence. In support thereof, Sasol submitted that an allegation that a patent includes claims made in contravention of Section 51 of the act is, by virtue of the provisions of Section 65(4) of the act, not a competent defence to a patent infringement action. Section 65(4) of the act stipulates that “in any proceedings for infringement the defendant may counterclaim for the revocation of the patent and, by way of defence, rely upon any ground on which a patent may be revoked”. The grounds on which a patent may be revoked are listed in Section 61 of the act and, according to Sasol, an amendment to a patent that falls short of the requirement of Section 51 of the act does not constitute a ground on which a patent may be revoked.

In coming to its decision, the court considered the wording of Section 51(10) of the act as well as the purpose and implications of an application made in terms thereof. Section 51(10) of the act states that “Any amendment of a specification made in conflict with the provisions of this section, other than an amendment allowed by the commissioner or a court, may be set aside by the commissioner at any time on application made to him”. The court held that the setting aside of an amendment made in conflict with the provisions of Section 51 of the act does not result in the revocation of the patent, but its effect is merely to restore the patent to its form prior to the amendment.

According to the court, Section 51(10) of the act does not permit an order being made by the commissioner, in a patent infringement action, declaring the patent claims to be in conflict with the provisions of Section 51 of the act, nor does it permit orders declaring that amendments made to the claims are in conflict with the provisions of Section 51 of the act.

The court concluded that the defence and counterclaim, as far as they are based on Section 51 of the act, are not a competent defence and counterclaim in an infringement action, and accordingly upheld the exception. The court further allowed African Explosives to rectify its pleadings by way of amendment.

The judgment is interesting in that it would seem that the appropriate procedure for African Explosives would have been to ask for the stay of the infringement action pending the outcome of the Section 51(10) application and not to rely on a defence and counterclaim based on Section 51 in the infringement action.

Publication Name: Jurisdiction Report: South Africa

Date: November, 2012

Werner van der Merwe

Author