IN THE COURT OF THE COMMISSIONER OF PATENTS
FOR THE REPUBLIC OF SOUTH AFRICA

Date:  2008-08-15

Patent Case Number:  2002/6992  

In the matter between:

ALCATRAZ INTEGRATED SYSTEMS (PTY) LTD                             Applicant

and

AUTOMATED IDENTIFACTION TECHNOLOGIES
(PTY) LTD                                                                                       Respondent

This matter being an application for revocation of South African patent number 2002/6992

JUDGMENT

SOUTHWOOD J

[1]	This is an application in terms of section 61(1)(c) of the Patents Act 57 	of 1978 (‘the Act’) for the revocation of the respondent’s patent number 	4260/2005 entitled ‘Security System’ (‘the patent’).  The applicant 	seeks the revocation of the patent on the grounds that the invention (a) 	was not new and (b) did not involve an inventive step.

[2]	The matter was enrolled for hearing and in limine the applicant seeks 	orders condoning the applicant’s failure to file its replying affidavit 	timeously and that certain issues be referred for the hearing of viva 	voce evidence.  Both applications are opposed by the respondent 	which 	contends that the application should be dismissed.  Since it will 	affect 	the outcome of this matter the application for condonation must 	be considered first.

[3]	In terms of section 61(1) of the Act any person may at any time apply in 	the prescribed manner for the revocation of a patent on any of the 	stipulated grounds.  Regulation 89 provides that an application for 	revocation shall be made on Form P20 and shall be accompanied by a 	statement of particulars of the grounds on which the application is 	based.  Regulation 90(1) stipulates that within two months of the 	lodging and service of the application for revocation the patentee shall 	lodge and serve a counterstatement in the form of a plea.  Regulation 	90(2) provides that within two months of the lodging and service of the 	counterstatement the applicant shall file and serve his evidence in the 	form of an affidavit and Regulation 90(3) provides that within two 	months of the filing and service of the applicant’s evidence the 	patentee may serve and file his answering affidavit in the form of an 	affidavit.  Regulation 91 provides that within two months of the filing 	and service of the patentee’s answering evidence the applicant may file 	and serve replying evidence, in the form of an affidavit, confined to 	matters strictly in reply.  Of importance are:-

(1)	Regulation 92, which provides that no further evidence shall be 	filed by either party except by leave or direction of the 	commissioner;

(2)	Regulation 93, which provides that all evidence shall be by 	affidavit unless otherwise directed by the commissioner;  and

(3)	Regulation 99 which provides that time limits specified may be 	extended by consent of the parties or, failing such consent, by 	the registrar on a request made to him.

[4]	(1)	On 29 September 2006 the applicant initiated this application by 		serving and filing its Form P20 and statement of particulars.  			The applicant alleged that the state of the art consisted of –

	‘2.1	PCT Patent Application number WO99/36647 	published on 22 July 1999 (annexure “A”);

	2.2	An electrified palisade split fence that was installed 	at Investec Head Office, 100 Grayston Drive, 	Sandton in 1997 (annexure “B”);

	2.3	An article entitled “The Eskom route to safety” that 	was published in Eskom News in July 2003 	(annexure “C”);  and

	2.4	South African Patent number 2002/6992 in the 	name of Automated Identification Technologies 	(Pty) Ltd (annexure “D”).’

(2)	On 22 November 2006 the respondent served and lodged its 	counterstatement.  The respondent formally admitted that the 	above items formed part of the state of the art before the patent 	priority date.

(3)	On 22 March 2007 the applicant served and filed its evidence.  	The respondent granted an extension of two months for the 	applicant to do so.  

(4)	 On 20 July 2007 the respondent served and filed its answering 	evidence.  The applicant granted a two month extension for the 	respondent to do so.  When granting this extension the applicant 	stated that it would not grant further extensions.

	(5)	In terms of Regulation 91 the applicant was obliged to serve and 	file its replying evidence within two months of 20 July 2007:  i.e. 	by 20 September 2007.

	(6)	On 13 September 2007 the applicant, without furnishing any 	reasons, requested an extension until 22 November 2007 to 	serve and file its replying evidence.  The respondent refused to 	grant the applicant the two months extension and granted one 	month extension:  i.e. until 22 October 2007.  The applicant did 	not pursue the request for a longer extension or request the 	Registrar to grant such an extension.  The applicant simply 	failed to meet the deadline.

	(7)	On 23 October 2007 the applicant’s attorney, Hahn & Hahn, 	addressed a letter to the respondent’s attorney, Bowman 	Gilfillan, pointing out that as they had not received the 	applicant’s replying evidence they assumed that the applicant 	did not wish to file a reply and asking Bowman & Gilfillan to 	apply for a hearing date by 19 November 2007 failing which 	Hahn & Hahn would apply for a hearing date.

	(8)	On 19 November 2007 Bowman Gilfillan faxed the following 	letter to Hahn & Hahn:

‘We advise that we have not been able to consult with our client for a variety of reasons which include our client’s unavailability for medical reasons and the writer’s unavailability because of attendances at the AIPPI and FICPI conferences in Singapore and Seville respectively.

We are, however, now able to consult with our client and expect to be in a position to advise whether or not we will be filing a replying affidavit later this week.  If we do then we will apply for condonation and if we do not then we will apply for a hearing date.

We will inform you of our decision this week.’

	(9)	On 21 November 2007 Bowman Gilfillan faxed the following 	letter to Hahn & Hahn:

	‘As indicated in our letter of 19 November 2007 we have now had an opportunity to consult with counsel and our client on how best to advance with the above matter and advise as follows:

	(1)	It will be necessary for the incorrect reference in 	the patents form P20, to the name of the patentee 	to be corrected and also the error in the Power of 	Attorney authorising Mr Graham to depose to an 	affidavit on behalf of our client.  This we will attend 	to depending on your client’s attitude to our next 	suggestion.

	(2)	From a reading of the evidence presented by Mr 	Armand Terblanche for our client and Mr Hartmuth 	Oellermann for your client it is clear that there is a 	dispute of fact around several aspects of the 	electrified palisade fence erected for Eskom in 	Brits and around the Eskom News Publication that 	describes its fence.  We are of the opinion that it 	will not be possible for a court to resolve this 	dispute of fact on affidavit only and, in an attempt 	to avoid running up unnecessary costs and further 	delaying the matter we suggest that the above 	matter be referred to oral evidence as soon as 	possible, preferably with your client’s agreement.

	We would appreciate it if you would put this to your client and revert to us with its attitude thereto.  Please note that should your client agree to a referral to oral evidence then the steps our client needs to take to rectify the oversights mentioned in (1) above will be different to those it will need to take if your client does not agree.  Consequently we will await your client’s response for taking the necessary steps.’

(10)	On 7 December 2007 Hahn & Hahn informed Bowman Gilfillan 	that the respondent did not agree to the matter being referred to 	oral evidence.  

(11)	On 14 December 2007 Bowman Gilfillan faxed the following 	letter to Hahn & Hahn:

	‘Thank you for your telefaxes of 7 and 11 December 2007 advising that your client does not agree that the above matter should be referred to oral evidence and requesting dates for a hearing of the above matter respectively.

	We are of the opinion that the matter should be referred to oral evidence for there is a clear dispute of fact between our respective experts.  To this end we will be making an application for it to be referred to oral evidence.  

	We also advise that we intend filing a replying affidavit to, at least, correct certain minor inaccuracies contained in our founding affidavit.  We will also apply for condonation for the late filing of a replying affidavit.

	We do, however, have a problem in that our counsel, Corrie van der Westhuizen, is out of the office until the second week in January 2008.  We will thus file our replying affidavit and application for a referral to oral evidence as soon thereafter as the papers can be settled.

	In the light of the above we do not believe that the above matter is ripe for hearing for, in the light of your client not agreeing to having the matter referred to oral evidence we presume that our application to have it referred will be opposed and that your client will want to file affidavits supporting its opposition.

	We trust that your client will not take any precipitous action until we have had an opportunity to prepare and file the above-mentioned documents for we will oppose any such action.

	Should your client reconsider its objection to having the matter referred to oral evidence then please let us know.’

(12)	On 24 January 2008 the applicant delivered a notice to amend 	its statement of particulars by adding the following items to the 	state of the art –

‘2.5	An electrified palisade fence that was installed at 	the Eskom Brits Industries site in 2003;

2.6	Use since 2003, by Eskom, of an electrified 	palisade split fence installed at its Brits Industries 	site;  and

2.7	Actual knowledge, on the part of Mr Armand 	Terblanche, of an electrified palisade fence 	installed at the Eskom Brits Industries site in 2003 	and several similar fences installed for Eskom prior 	to July 2003.’

	(13)	The respondent did not object to the amendment and on 8 	February 2008 the applicant delivered the amended Statement 	of Particulars.  On 9 July 2008 the respondent served and filed 	its counterstatement to the amended statement of particulars.  	The respondent denied that the new items formed part of the 	state of the art.  

	(14)	At no stage did the applicant request the leave of the 	Commissioner to file further evidence.

	(15)	On 24 January 2008, some three months late, the applicant filed 	a set of replying affidavits.  These include a request for 	condonation for the late filing of the affidavits and new evidence 	by Armand Terblanche relating to the Eskom fence.  The 	applicant’s attorney, Mr Llewelyn Parker, has made a supporting 	affidavit.

	Condonation

[5]	Section 19(1) of the Act states:

‘(1)	Save as is otherwise provided in this Act, the procedure 	in connection with any proceedings before the 	commissioner shall, as far as is practicable, be in 	accordance 	with the law governing procedure in civil 	cases in the Transvaal Provincial Division of the Supreme 	Court of South Africa, and in default thereof and where no 	relevant provision is made in this Act, the commissioner 	shall act in such a manner and on such principles as he 	may deem best fitted to do substantial justice and to give 	effect to and carry out the object and provisions of this 	Act.’

	Section 16(2) of the Act provides:

‘(2)	Whenever by this Act any time is specified within which 	any act or thing is to be done, the registrar or the 	commissioner, as the case may be, may, save where it is 	otherwise expressly provided, extend the time either 	before or after its expiry.’

Neither the Act nor the regulations (which in terms of section 2(xiv) are part of the Act) deal with the procedure where a party has not complied with the regulations.  Uniform Rule 27 governs inter alia the grant of condonation.  It provides that –

‘The court may, on good cause shown, condone any non-compliance with these rules.’

[6]	In seeking condonation for failing to file and serve its replying evidence 	timeously the applicant accepts, correctly, that it must show ‘good 	cause’.  The courts 	have refrained from attempting an exhaustive 	definition of ‘good cause’.  Nevertheless, it is accepted that the court 	has a wide discretion but that the discretion must be exercised 	judicially on a consideration of the facts of each case – S v Yusuf 1968 	(2) SA 52 (A) at 53H:  Federated Employers Fire and General 	Insurance Co Ltd v McKenzie 1969 (3) SA 360 (A) at 362G-363A – 	and that in essence, it is a matter of fairness to both sides – S v Yusuf 	supra at 53H:  Cairns Executors v Gaan 1912 AD 181 at 186 – and 	that the discretion is not an absolute or unqualified discretion but must 	be exercised in accordance with recognised principles – S v Yusuf 	supra at 53H-54B.

[7]	The applicant’s counsel concedes that the explanation given by the 	applicant for its failure to file its replying evidence timeously is ‘thin’ but 	submits that ‘it passes muster’.  He argues that an explanation has 	been given even though it lacks detail.  I do not agree that the 	explanation passes muster.  I also do not consider that the 	circumstances of the case justify the grant of condonation and that 	granting condonation would be fair to both sides.  In my view the 	applicant is opportunistically seeking to make a new case in its replying 	affidavits which inevitably will delay the finalisation of this case and 	result in increased costs.  I shall deal with these issues more fully 	hereafter.

[8]	At the outset it should be noted that the applicant (or its attorney) has 	conducted this case as if the Act and the regulations do not apply.  	Having been refused the extension of two months it did not 	immediately seek the extension it (apparently) needed from the 	registrar.  It is noteworthy that when seeking the extension of two 	months the applicant’s attorney did not furnish any reasons for needing 	an extra two months.  By then the applicant had already had almost 	two months to prepare its replying evidence and no mention was made 	of any difficulty in communicating with the client or obtaining 	information for the replying affidavits.  While the regulation 	pertinently allows the applicant the opportunity to file replying evidence 	‘confined to matters strictly in reply’ it clearly does not 	provide for the 	applicant to make out a new case.

[9]	On 24 January 2008 the applicant eventually served and filed its 	replying affidavits which include an application for condonation and 	new evidence about the fence erected at Eskom’s Brits premises.  The 	applicant did not seek leave to file further evidence as it was required 	to do by Regulation 92.  If the applicant had intended to make out a 	new case in its replying affidavits it should have sought the 	commissioner’s leave and the commissioner could then have directed 	what other evidence should be filed thereafter and when it should be 	filed.

[10]	The replying evidence was filed three months later than when it 	should have been (i.e. 22 October 2007).  The applicant should have 	furnished a satisfactory explanation for failing to serve and file its 	replying affidavits before that date and during the three months 	thereafter.  The applicant has taken from 20 July 2007 until 24 January 	2008 to prepare a 10 page affidavit by Glen Graham, a 10 page 	affidavit by Armand Terblanche and a one page confirmatory affidavit 	by the applicant’s attorney, Llewellyn Parker.

[11]	After setting out the 	correspondence between the attorneys the 	applicant’s deponent, Glen Graham, furnishes the explanation for the 	delay in preparing and filing the applicant’s replying affidavits.  	According to Mr Graham this was caused by him being hospitalised on 	two occasions, the first in Hillcrest, Kwazulu Natal, in October 2007 (no 	dates given) as a result of a broken arm and the second in the 	Olivedale Clinic in Gauteng in November 2007 (no dates given) as a 	result of a broken leg.  In addition, says Mr Graham, the applicant’s 	attorney Mr Parker was not available for almost the whole of October 	2007 (attending an Intellectual Property Law Conference in Beijing 	from 18 September 	2007 to 10 October 2007) and most of November 	2007 (attending an 	Intellectual Property Law Conference in Singapore 	from 5 November 2007 to 16 November 2007).  Finally, says Mr 	Graham, by the time that both he and Mr Parker were available (no 	dates given) the end of year holidays intervened (no dates given).
[12]	As pointed out by the respondent’s counsel, these allegations do not 	stand 	scrutiny.  The fact that Mr Graham was hospitalised (if indeed he 	was) in October and November 2007 would not prevent the applicant’s 	attorney from communicating with him.  Furthermore the fact that he 	was hospitalised in Gauteng in November 2007 means that he was 	within easy reach of the applicant’s attorney.  The failure to set out the 	dates is obviously deliberate.  It is hard to imagine why Mr Graham 	would need to be hospitalised on each occasion for more than a few 	days at the most.  The allegations about Mr Parker are also a gross 	exaggeration.  From the dates given, Mr Parker was away from 1 to 10 	October, not almost the whole of October.  He was therefore available 	from 11 to 22 October 2007 when the replying affidavits had to be filed.  	The failure to do anything in this period is simply not explained.  Mr 	Parker’s affidavit takes the matter no further.  He merely confirms the 	allegations in Mr Graham’s affidavit.  Mr Parker was also away from 5 	to 16 November 2007 which cannot be described as most of 	November.  The failure to attend to the matter during 1 to 4 and 17 	to 	30 November has not been explained.  The failure to state when Mr 	Graham and Mr Parker became available and when the end of year 	holidays commenced is also deliberate.

[13]	As already mentioned when the applicant sought the extension of two 	months on 13 September 2007 no reasons were given for the failure to 	meet the September deadline or why an additional two months were 	required to prepare and file the replying affidavits.  It appears that once 	the applicant’s counsel was available in the new year it took only about 	10 days to prepare and file the affidavits.  It is a matter of concern that 	the applicant’s explanation for not filing its replying affidavits sooner is 	contradicted by the contents of Bowman Gilfillan’s letters.  On 19 	November 2007 Mr Parker wrote 	that he was now able to consult with 	his client and expected to be in a 	position to advise later that week 	whether or not the applicant would file a replying affidavit and on 21 	November 2007 Mr Parker wrote that he had been able to consult with 	counsel and client on how best to advance with the matter and 	suggested that the matter be referred to oral evidence.  No mention 	was made of the replying affidavits.  The respondent’s attorney advised 	Bowman Gilfillan on 7 December 2007 that the respondent did not 	agree to the matter being referred to oral evidence.  Nowhere in the 	applicant’s explanation is the failure to prepare and file the replying 	affidavits before 13 September 2007 dealt with.  On reading the 	applicant’s explanation the conclusion is unavoidable that the applicant 	and/or its attorney considered that however vague and however 	illogical, any statement would suffice.  In my view this is unacceptable.

[14]	On 24 January 2008 the applicant filed a notice of intention to amend 	the statement of particulars to allege that other matters formed part of 	the state of the art, in particular the as-built fence at Eskom’s Brits 	premises and Armand Terblanche’s knowledge of it and other fences.  	This would be a new case for the respondent to meet and would 	require that further evidence be presented.  The applicant did not wait 	for the period of objection to the amendment to expire before filing its 	evidence.  It simply incorporated the evidence in the replying affidavits 	served and filed on 24 January 2008.  It did so without seeking the 	leave of the commissioner as required by Regulation 92.  It then 	enrolled the matter without the commissioner having given leave to 	file 	further evidence or the respondent having had an opportunity to file 	any evidence on the new case.  It now seeks to have the matter 	referred to oral evidence to avoid these difficulties.  During the hearing 	it became clear that the affidavits were incomplete and that the parties 	would have to file further affidavits to cover the new case.  The court 	was not asked to issue directions in this regard.

[15]	Finally, it is clear that the applicant’s new case relating to the Eskom 	fence was not considered at the beginning of the case.  The applicant 	chose to rely on the article ‘The Eskom Route to Safety’ rather than the 	fence itself.  The applicant did this knowing that the actual fence could 	form part of the state of the art – it relied on the electrified palisade 	fence installed at Investec Head Office.  It is significant that Armand 	Terblanche who testified pertinently about the Eskom article 	and who 	was advised about the requirements for lack of novelty did not 	immediately state that the Eskom fence, as built, did contain all the 	integers of claim 1 of the patent.  Despite having designed and 	installed the fence he did not allege this but confined himself to the 	Eskom article.  He concludes his analysis by saying that the sentence 	in the article ‘Both sections are connected to the alarm network’ 	disclose integers (vi) and (vii) of claim 1 of the patent:  i.e. a sensor for 	automatically sensing tampering with the lower part and a switch for 	automatically connecting the energising means to the electrical 	conductive path of the lower part to energise the lower part if the 	sensor sense tampering with the lower part.  It is inconceivable that if 	the as-built fence contained these integers Armand Terblanche would 	not have said so.  At no stage did he attempt to demonstrate that it did 	and there is no evidence in the applicant’s affidavits to that effect.  	There is no explanation for his failure to do so.  It is now opportunistic 	of the applicant to attempt to make out a such a case.  It could and 	should have done so in its initial statement of particulars and affidavits.

[16]	As will appear later in this judgment the issue of whether the Eskom 	article discloses all the integers of claim 1 of the patent must be 	decided on the contents of the article.  Oral evidence cannot assist the 	court in this regard. 

[17]	For these reasons condonation for the late filing of the replying 	affidavits is refused and these affidavits will be ignored.  The 	application to refer the matter for oral evidence must now be 	considered.

	Application for referral to oral evidence

[18]	The applicant seeks an order that certain defined issues be referred for 	viva voce evidence because they cannot be resolved on the papers.  In 	my view the application is misconceived as the matter can be decided 	on the papers.  During argument the applicant’s counsel conceded that 	the issues formulated in the application for referral for the hearing of 	viva voce evidence are not appropriate and that what the applicant 	really wishes to do is have a hearing about whether the fence at the 	Eskom, Brits premises discloses all the integers:  i.e. whether the 	Eskom, Brits fence destroys novelty.  As already pointed out this is not 	the issue in the affidavits filed.  The applicant’s case is and was based 	on the article about the fence and not the fence itself.  It is therefore not 	appropriate to refer the issue for viva voce evidence and this request 	must be refused.  As already mentioned the issue of whether the 	Eskom article discloses all the integers of claim 1 must be decided with 	reference to the article itself and this means that the issue must be 	decided on the papers alone.

	Merits

[19]	The applicant seeks revocation of the patent on the grounds that the 	invention is not novel and that the invention does not involve an 	inventive step.  

	Novelty

[20]	For present purposes it is only necessary to consider the Eskom article 	(annexure C) as it is common cause that the two patents (annexures A 	and D) and the electrified palisade split fence installed at Investec 	Head Office, 100 Grayston Drive, Sandton (annexure B) do not 	disclose integers (vi) and (vii) of claim 1 of the patent.

[21]	For the attack on the novelty of the patent to be upheld it must be 	shown that, in substance, the same invention was described in the 	allegedly anticipatory publication, the Eskom article.  In Netlon Ltd and 	another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A) at 861H-862B (1977 	BP 87 (A) at 108F-109C) the court set out the relevant principles as 	follows –

‘[T]he defence (or objection) of anticipation relates to the claims and not to the description of the invention in the body of the specification in suit (see too, the Letraset case, supra at pp264-5).  The prior printed publication alleged to be anticipatory must be construed, for the exercise is primarily one of construing and comparing the two documents;  moreover it must be construed as at the date of its publication to the exclusion of information subsequently discovered;  the question then considered is whether the prior publication ‘describes’ the invention in suit as claimed;  that is, whether it sets forth or recites at least the latter’s essential integers in such a way that the same or substantively the same process or apparatus is identifiable or perceptible and hence made known or the same or substantially the same product can be made from that description in the prior publication;  if the description in the prior document differs, even in a small respect, provided it is a real difference, such as the non-recital of a single essential integer, the anticipation fails;  the opinions of expert-witnesses that the prior publication does or does not anticipate a claim in suit must be disregarded for that is for the Court to decide.’

	See also Schlumberger Logelco Inc v Coflexip 2003 (1) SA 16 (SCA) (2002 BIP 35 (SCA)) para 23;  Genturico AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 646C-647A (1971 BP 58 (A) at 138-139);  Veasey v Denver Rock Drill and Machinery Co Ltd 1930 AD 244 at 282.

	To constitute an anticipation the description in the prior publication must be contained in a single prior publication.  It cannot be synthesised or mosaiced from two or more publications.

[22]	The applicant contends that all the integers of claim 1 of the patent are 	disclosed in the article (annexure C).  The applicant contends that 	these integers are covered by the sentence ‘Both sections are 	connected to the alarm network’.  I do not agree.  The words do not 	state expressly or by implication that there is a sensor such as that 	referred to in integer (vi) or a switch such as that referred to in integer 	(vii).  The article therefore does not anticipate claim 1 of the patent or 	any of the other claims, all of which are dependent on claim 1.

		Obviousness

	[23]	In terms of section 61(1)(c) of the Act a patent may be revoked on the 	ground that the invention is not patentable.  In terms of section 25 of 	the Act, in order to be patentable an invention must involve an 	inventive step.  With regard to this requirement, subsection 25(10) 	provides –

‘Subject to the provisions of section 39(6), an invention shall be deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms, immediately before the priority date of the invention, part of the state of the art by virtue only of subsection (6) (and disregarding subsections (7) and (8)).’

	Subsection 25(6) provides –

	‘The state of the art shall comprise all matter (whether a product, a process, information about either, or anything else) which has been made available to the public (whether in the Republic or elsewhere) by written or oral description, by use or in any other way.’

[24]	The necessary first step for the application of these provisions is the determination of (i) what the art is as to what the invention relates;  (ii) what the state of the art was at the relevant time and (iii) who is to be regarded as a ‘person skilled in the art’ - Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A) at 413D (1995 BP at 210D-F).  

[25]	 After this step the structured enquiry described in the case of Ensign-Bickford (SA) (Pty) Ltd and Others v AECI Explosives and Chemicals Ltd 1999 (1) SA 70 (SCA) at 80H-J (1998 BIP 271 (SCA) at 280E-G) must be undertaken and the following four matters must be determined –

	(1)	what the inventive step said to be involved in the patent is;
(2)	what, at the priority date, the state of the art (as statutorily defined) relevant to that step, was;
(3)	in what respect the step goes beyond, or differs from, that state of the art;  and
(4)	whether, having regard to such development or difference, the taking of the step would be obvious to the skilled man.

[26]	On the question of whether what has been claimed is inventive is obvious the court in the Ensign-Bickford case said at 81C-I –

‘Firstly, the question to be determined is whether what is claimed as inventive would have been obvious, not whether it would have been commercially worthwhile … Secondly, the emphasis must lie on the technical features.  A passage in the judgment of Sir Donald Nicholls, Vice Chancellor, in the case of Mölnlycke v Proctor & Gamble (supra) bears repetition.  At 113 the Vice Chancellor said:

“In applying the statutory criterion and making these findings the Court will almost invariably require the assistance of expert evidence.  The primary evidence will be that of properly qualified expert witnesses who will say whether or not in their ‘opinions the relevant step would have been obvious to a skilled man having regard to the state of the art’.  All other evidence is secondary to that primary evidence.  In the past, evidential criteria may have been useful to help to elucidate the approach of the common law to the question of inventiveness.  Now that there is a statutory definition, evidential criteria do not form part of the formulation of the question to be decided.

			…

What with hindsight, seems plain and obvious, often was not so seen at the time.  It is for this reason that contemporary events can be of evidential assistance when testing the expert’s primary evidence.  For instance, many people may have been industriously searching for a solution to the problem for some years without hitting upon the allegedly obvious invention … Yet again, evidence of the commercial success of the invention can lead into an investigation of the reasons for the success;  there may be commercial reasons for this success unrelated to whether the investigation was or was not obvious in the past.  

Secondary evidence of this type has its place and the importance, or weight, to be attached to it will vary from case to case.  However, such evidence must be kept ‘firmly in its place.  It must not be permitted, by reason of its volume and complexity, to obscure the fact that it is no more than an aid in assessing the primary evidence’”’.

[27]	The law requires only that there be inventiveness.  It is not a requirement that the invention involves a large step forward.  See Veasey’s case supra at 282.

[28]	There is little or no evidence on the issue.  The applicant’s counsel concedes that he is hard pressed to contend that the applicant has made out a case on this basis.  It should be recorded that in the heads of argument filed on behalf of the applicant the applicant made no submissions on the issue.

[29]	On the facts set out I cannot find that the applicant has discharged its onus.

	Order

[30]	The application is dismissed with costs.

___________________
B.R. SOUTHWOOD
JUDGE OF THE HIGH COURT

       

 

CASE NO:  Patent 2002/6992  

HEARD ON:  29 July 2008  

FOR THE APPLICANT:  ADV. C.J. van der Westhuizen  

INSTRUCTED BY:  Mr L. Parker of Bowman Gilfillan Inc.

FOR THE RESPONDENT:  ADV. D.P. HUGO 

INSTRUCTED BY:  Ms C. Berndt of Hahn & Hahn Inc.

DATE OF JUDGMENT:  15 August 2008