THE SUPREME COURT OF APPEAL

OF SOUTH AFRICA

Case No. 480/97

In the matter between:

BATEMAN EQUIPMENT LTD
1st Appellant
ELANDSRAND GOLD MINING CO LTD
2nd Appellant

and

THE WREN GROUP (PTY) LTD
Respondent

Coram:

VIVIER, GROSSKOPF, HARMS and SCOTT
JJA, and MELUNSKY AJA
Heard:

15 NOVEMBER 1999
Delivered:
29 NOVEMBER 1999

Patent amendment ito section 51(9) of the Patents Act 57 of 1978

JUDGMENT

HARMS JA/

HARMS JA:
[1] 
The registered proprietor (Athe patentee@) of patent 93/6167
instituted infringement proceedings against the appellants in the Court of
the Commissioner of Patents.  In response, the appellants filed a
counterclaim for the revocation of the patent alleging its invalidity
because of a lack of novelty, obviousness and a lack of clarity.
Attempting to avoid the possible consequences of the counterclaim, the
patentee (the present respondent) applied for an amendment of the
specification in terms of s 51(9) of the Patents Act 57 of 1978.  It
provides that where proceedings relating to a patent are pending in a
court, any application for the amendment of the specification has to be
made to that court.  Mynhardt J, sitting as Commissioner, granted the
application in spite of the wide-ranging objections to the amendment.
The appeal is before us with his leave.

[2] 
On appeal, the number of objections to the amendment
persisted in were substantially less than in the court below.  Three
matters remain in contention: whether the main reason given for the
amendment to the former claims 1 and 7 amounted to Afull reasons@ (s
51(1)), whether these claims in their amended form lack a fair basis in
the specification (s 51(6)(b)), and whether certain terms in the amended
claims are unclear and would render them invalid and subject to
revocation (s 61(1)(f)(i)).
[3] 
The court below and counsel before us assumed that the
statutory requirement in s 51(1) of furnishing Afull reasons@ for a
proposed amendment applies to an application which is not governed by
that provision but by ss (9).  There is no basis for the assumption.
Section 51(1) deals with applications for amendment directed to the

Registrar of Patents and in terms requires Afull reasons@.  (See, in general,
the discussion of the matter in Kimberly-Clark of SA (Pty) Ltd ( formerly
Carlton Paper of SA (Pty) Ltd v Proctor and Gamble SA (Pty) Ltd 1998
(4) SA 1 (SCA).)  The same or a similar requirement is not contained in
ss (9).  There may be a valid reason for the distinction.  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
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) 895G-J).  Nevertheless, the difference
between the two cases has material legal consequences: under ss (1), Afull

reasons@ are jurisdictional facts; 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.
[4] 
The inventor and managing director of the patentee, Mr
Batson, explained in the founding affidavit that, upon the receipt of the
counterclaim, he engaged the services of another firm of attorneys,
namely the patent attorneys who had drafted the original specification, to
take over the conduct of the litigation.  This firm advised him that a court
could find the patent invalid.  Whilst still believing in its validity, he
decided to apply for the amendment Awith the intention of removing any

invalidity from the patent specification, if it exists, and strengthening the
patent by limiting the claims to commercial practical embodiments and
deleting unnecessary matter.@  The main reason for the amendment to
claims 1 and 7, he said, was to ensure that they were clearly
distinguishable over the prior art.  (The appellants' attack is limited to the
sufficiency of this reason and the subsidiary reasons dealing with specific
words and phrases do not require further consideration.)  Batson attached
a list of all prior art documents of which he had become aware but added
that he did not believe that any were relevant, although one cited by the
appellants Acould be considered relevant@.
[5] 
The appellant's argument was based upon a statement - in
the context of Afull reasons@ in s 51(1) -  by McCreath J.  Speaking on
behalf of a full court in Proctor & Gamble SA (Pty) Ltd v Carlton Paper
of South Africa (Pty) Ltd and another 1997 (3) SA 292 (T), he said that

Asufficient information should be given to enable prospective objectors
and the Registrar to be properly apprised of the real reasons for the
amendment@ (at 297G-H).  This meant, so the argument went, that it was
incumbent upon the patentee to identify that which he accepts forms part
of the prior art and which necessitates the amendment, because without
the identification of the prior art potential objectors will not know
whether the patentee has achieved the object of the amendment.
[6] 
McCreath J's judgment was overruled on appeal (in
Kimberly-Clark) and the substance of the quoted statement was not
accepted as correct because it does not reflect realistically the basis of
opposition to patent amendments (ibid at 13A-D).  Whether the patentee
has failed in achieving its object is for the objector to establish (cf Water
Renovation (Pty) Ltd v Gold Fields of SA Ltd 1994 (2) SA 588 (A) at
594C-D) and I know of no reason why the patentee should assist the

objector in finding fault with the amended specification.
[7] 
The nature and object of amendment proceedings must be
seen in the context of our patent system as a whole.  Ours is a non
examining country and an alleged inventor is entitled to a patent for his
supposed invention without having to satisfy anyone of its merit or
validity.  He does not have to give any reasons for his choice of wording.
Should he sue for infringement, he has no duty to assist the alleged
infringer in establishing whether his monopoly is valid or not.  Why
should he be saddled with a burden if he wishes to reduce the scope of
his protection in an attempt to render the patent valid, while in obtaining
or enforcing a monopoly he bears no similar burden?  As much as it is in
the public interest that persons with inventive minds should be
encouraged to give the results of their efforts to the public in exchange
for the grant of a patent (cf Miller v Boxes & Shooks (Pty) Ltd 1945 AD

561 at 568 and 578), it is in the public interest that patents should be
rectified or validated by way of amendment.
[8] 
Mynhardt J, in a full and careful judgment, held that it
depended upon the circumstances whether adequate reasons were
provided and concluded that, on the information given, the appellants
could have established whether the patentee had succeeded in avoiding
the attack on the ground of lack of novelty.   It was not argued that he
had misdirected himself in a manner which had prejudiced the appellants
and this Court has consequently no basis of interfering with his value
judgment (South African Druggists Ltd v Bayer AG 1989 (4) SA 103 (A)
108 I-J).
[9] 
In essence, the invention has two aspects.  The first is a
process for treating a suspension of solid particles in a carrier liquid to
separate the liquid from the solids.  The other is a settling apparatus

which has no moving parts but uses gravity to perform the separation
process.   In the course of the process, during which the carrier liquid is
circulated and re-circulated, the suspension is progressively thickened.
The slurry which is formed is withdrawn at the lower end of the
apparatus whereas the clarified liquid, due to its lower density, rises and
is withdrawn at the upper end.
[10] The amendments relating to claims 1 and 7 remain in
contention.  In the amended specification claim 7 was renumbered and is
now claim 6.  In quoting these two claims in their amended form, I have
underlined the insertions brought about by the amendment and they have
been numbered from {A} to {F} in accordance with the system used in
the application.  Deletions are indicated by square brackets.
[11] Claim 1 is a process claim and provides:
"A process for treating a suspension of solid particles in a carrier

liquid, which comprises
subjecting the particles in the suspension to gravity settling in a
treatment zone {A}  by feeding the suspension into a feed zone of the
treatment zone,  the treatment zone having at least an upper free settling
region in which free settling of solid particles through the liquid takes
place, a hindered settling region below the free settling region in which
hindered settling of particles takes place, and a compaction region
below the hindered settling region in which the solid particles are in
contact with one another so that a slurry is formed in this region[;] {B}
the feed zone being located in the free settling region;
withdrawing clarified liquid from the free settling region;
allowing liquid, in at least the compaction region, to move
upwardly along at least one upwardly inclined pathway {C} located in
at least the compaction region while at least partially protected from
settling solid particles {D} each said pathway being provided in the lee

(relative to the direction in which the solid particles are settling) of at
least one continuous or discontinuous static inclined separating
member;
allowing clarified liquid from the pathway or pathways to pass
upwardly through a conduit or conduits into the feed zone, with
substantially no mixing thereof with liquid in the free settling region,
due to the difference in specific gravities of the clarified liquid passing
upwardly and that of the suspension in the compaction, hindered and
free settling regions;  and
withdrawing slurry from the compaction region."
[12] Claim 6 (originally claim 7) is a claim directed towards an
apparatus:
"Settling apparatus, which comprises a vessel providing, in use,
a liquid treatment zone having at least an upper free settling region in
which free settling of solid particles in suspension in a liquid introduced

into the liquid treatment zone, through the liquid, can take place, a
hindered settling region below the free settling region and in which
hindered settling of particles can take place, and a compaction region
below the hindered settling region in which solid particles will be in
contact with one another so that a slurry is formed in this region;
feed means for feeding the suspension into the vessel[;]  {E} said
feed means comprising a feed well or cylinder located in the free
settling region and having a suspension discharge outlet at the bottom
thereof;
a suspension feed conduit leading into the feed well or cylinder;

clarified liquid withdrawal means for withdrawing clarified
liquid from the free settling region of the vessel;
at least one static separating member having an inclined surface
in at least the compaction region of the vessel so that liquid can pass
upwardly along an upwardly inclined pathway provided by the

[underside of the surface; and]  undersurface of the member;
{F} a conduit or conduits defining a passageway opening into
the feed well or cylinder and adapted in use to receive liquid from the
upwardly extending pathway and lead it through at least the free settling
region into the feed well or cylinder due to the difference between the
specific gravity of clarified liquid in the pathway and conduit(s) and the
specific gravity of the suspension in the compaction, hindered and free
settling regions; and
slurry withdrawal means for withdrawing slurry from the
compaction region of the vessel."

[13] The appellants argue through their expert witness, Mr Kun,
and in the heads of argument that insert {A} renders the claim uncertain
because  the use of the word Aby@  creates the impression that the gravity
settling takes place in the feed zone only.  Kun, while insisting that this is
what the claim literally means, accepted that such a meaning is

nonsensical and in conflict with the body of the specification.  The
answer to the objection is fairly straightforward.  The patent and the
claim describe a continuous process.  If the claim is read as a whole - as
it should be - it is even to the unskilled clear that the feeding of the
suspension into the feed zone of the treatment zone is but the first step in
the claimed process and that gravity settling takes place throughout the
whole process until the slurry settles in the compaction region and the
clarified liquid is withdrawn.  One can only describe Kun's approach to
interpretation as one of Astudied obtuseness@ (Roman Roller CC and
another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A) 419E).
[14] The second aspect of lack of clarity raised is that it is not
clear where the different regions (namely the free settling region, the
hindered settling region and the compaction region) end or start for any
particular installation or process.  Before proceeding with a consideration

of the facts, it may be useful to recall what the approach to interpretation
should be and to refer for that purpose to some extracts from Corbett CJ's
judgment in Roman Roller at 419C-420C:
AIt is the duty of a patentee to state clearly and distinctly the nature and
limits of his claim: to define his monopoly.  Only if this is done will
others know exactly what they may do and what they may not do.  The
degree of clarity required is that which leads to 'reasonable certainty'. In
determining whether a patent claim stakes its monopoly with a
sufficient degree of clarity, the Court must view the patent through the
eyes of the skilled addressee in the relevant art; and the Court must take
into account that such addressee is expected to use reasonable skill and
intelligence in interpreting the language of the patent.  He is not
required to struggle unduly with it, but he must make the best of it and
not adopt an attitude of studied obtuseness.@
AWhere the words permit it, an interpretation should be adopted which

is consistent with the description of the problem to be overcome and the
method of doing so described in the body of the specification.@
AMoreover, the mere fact that simple, non-inventive test trials or
experiments may be necessary in order to ascertain whether a particular
item falls within the ambit of a patent or not will not invalidate the
patent . . ..@
The specification states that the various regions are not necessarily
sharply demarcated and can overlap.  (Kun acknowledges that it is well
known and well documented that different regions will change in
elevation depending on the process  parameters.)  Because of the nature
of the invention, mathematical precision is not possible and the addressee
is called upon to conduct simple, non-inventive test trials in order to
establish, in operation, where the borders lie and to adapt the process
parameters accordingly.  There is not the slightest suggestion in the

evidence that the addressee will be unable to perform such tests.  Instead,
the appellants rely on the argument that the addressee must be able to
predict accurately whether a particular process or apparatus will fall
within or outside the limits of a claim.  There is no rule that requires that
the limits of a claim have to be predictable.  The limits only need to be
reasonably certain.
[15] The last issue relating to the lack of clarity concerns the
meaning of the term Ainclined surface@ in claim 6.  Counsel did not raise
the matter during oral argument and I find it difficult to fathom what the
point is which is made in the heads of argument.   Respondent's counsel,
in their heads of argument, also had a problem  in coming to grips with
the argument.  The term Ainclined surface@ is used throughout the
specification and it is common cause that it has there a clear meaning.  It
follows that any ambiguity in the claim can be resolved by means of a

quick reference to the body of the specification (Gentiruco AG v
Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) 615E).
[16] Mynhardt J referred with approval to an unreported
judgment (Deton Engineering (Pty) Ltd and another v McKelvey and
others1) of Van Dijkhorst J, sitting as Commissioner of Patents.
Probably sensing that amendment litigation has become overly
formalistic and is being used as a delaying tactic, Van Dijkhorst J, in the
exercise of his discretion, refused to consider the question of continuing
invalidity in amendment  proceedings, holding that they should be
ventilated in the pending revocation proceedings.  His justification was
that since the viability of the patent was the subject of debate in the
revocation proceedings, it would prima facie be a folly to introduce it as
an issue in the amendment proceedings when it is not specifically

In re patent 89/4136 on 11 June 1997.  An appeal noted to this Court against the

pertinent to the amendment itself but only generally; amendment
proceedings, he said, should be kept relatively simple and issues should
not be allowed to multiply.   Mynhardt J did not, however, follow the
commendable approach of Van Dijkhorst J because the judgment
became available only after the argument had commenced.  In the light
of the exercise of his discretion, the question of continuing validity
remained an issue before this Court.
[17] I turn then to the final and main point argued, which is
whether the two claims in their amended form are fairly based on matter
disclosed in the specification before amendment (s 51(6)(b)).  Unless
they are so based, their amendment could not as a matter of law have

judgment was withdrawn shortly before the hearing.

been granted.
[18] It is accepted (at least implicitly) by the appellants that the
amendment did not introduce new matter or matter not in substance
disclosed in the specification before amendment (ss (6)(a)), and that the
amended claims fall wholly within the scope of the unamended claims
(ss (7)).  The appellants have also not alleged in their counterclaim that
the unamended claims were not fairly based upon the unamended
specification.  If (i) the old claims were fairly based upon the old
specification, (ii) no new matter was introduced into the body of the
specification and (iii) the new claims fall wholly within the scope of the
old claims, it ought to follow logically that the new claims are also fairly
based upon the old specification.  That would put  an end to the
objection, but in the event of any fault in the equation, I proceed to deal
with the issue as argued.

[19] Appellants' counsel took as the point of departure a
threefold test propounded by Lloyd-Jacob J ( In the matter of the Mond
Nickel Company Ld's Application for a Patent [1956] RPC 189 (PAT) at
194) for determining whether the claims of a complete specification are
fairly based upon an earlier provisional specification (see s 33(2) and
(5)), the submission being that the requirement must Acertainly be
analogous@ to the Afair basis@ requirement of s 51(6)(b) (by parity of
reasoning, presumably also to that of s 32(4) read with s 61(1)(f)(ii)
which deals with the requirements for claims).   Burrell South African
Patent and Design Law (3rd ed) does not agree and argues that the two
situations are Anot altogether analogous@ (at par 2.31 and 2.57).   Whether
the situations are analogous or not  is unnecessary to decide.  But before
dealing with the Mond Nickel test, it appears to me appropriate to
determine at the outset what the object of the requirement of fair basis in

s 51(6)(b) is and then to consider whether or not, properly construed, the
new claims are fairly based upon the original disclosure.
[20] 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 extend 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.  (Cf Burrell at par 2.32; Matbro
Ltd v Michigan (Great Britain) Ltd and another [1973] RPC 823 (Ch)
831; Screen Printing Machinery Ltd's Application [1974] RPC 628
(PAT) 635; Singer The European Patent Convention p 715.)  Transposed
to the amendment stage, and taking into account that the effect of an
amendment is retrospective, the objective 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) 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).
[21] 
The Mond Nickel questions, having been formulated
in a different context, have to be adapted in order to fit facts of the
present case.  So adapted, one must determine first whether the
objectionable part or integer Acan be said to have been broadly described@

in the original specification;  then one must consider whether there is
anything in the original specification which is Ainconsistent with@ the
integer;  and last, whether the original specification is Awholly silent@ on
the integer.   I have some reservations about whether there are three
enquiries, or whether these questions are not really the same couched in a
different form.   It is difficult to envisage how a specification can
describe in broad terms something on which it is wholly silent or how
something inconsistent with the invention can at the same time fall
broadly within its terms.
[22] In order to identify the appellant's complaint I intend to refer
to the argument as developed in the heads of argument and will only to a
limited extent attempt to deal with the oral argument.  The latter, it seems
to me, amounted to nothing other than the written argument although at
times it was presented as something different.  The objection relates to

insert {D} in claim 1 and insert {F} in claim 6.  Both inserts are to the
same effect, the only difference being that the one relates to the process
and the other to the apparatus performing that process. Since the
objection is the same, I shall limit the discussion to insert {F} because it
is easier to describe.
[23] For purposes of the discussion it is necessary to explain in
more general terms a few aspects of claim 6.  As mentioned, it claims a
settling apparatus.  The contaminated liquid passes through a treatment
zone which is divided into three settling regions. In the third and lowest
region, the compaction region, the slurry is deposited.   There is in this
region one or more static separating members which may be cone-like.
(For ease of understanding I shall limit the discussion that follows to
cones, fully aware that the claim is wider.)  They form, in the terms of
the specification, an Aupwardly extending pathway@ - the purified or

partially purified liquid passes upwardly along the inner side of the
inverted cone and from the apex of the cone, by way of a conduit (of
which there may be more than one),  to the upper part (the feed well) of
the apparatus where clarified liquid is drawn off.  Insert {F}, among
other things, defines the conduit.  Relevant for present purposes is the
requirement that the conduit must be Aadapted in use to receive liquid
from the upwardly extending pathway@.
[24] For the conduit merely to be adapted in use to receive liquid
from the upwardly extending pathway, say the appellants, is not
sufficient.  The conduit, according to the argument, in order to be
consistent with the unamended specification, should at least lead from an
upper edge of the uppermost static inclined surface (the inverted cone in
the example).   In other words, the conduit must at least protrude from or
be connected to the top cone.  (Mynhardt J held, and it is not in issue

that, properly interpreted, the amended claim does not require such
protrusion or connection.)
[25] The specification in its unamended form stated that the
conduit Amay lead upwardly from an upper edge of at least the uppermost
static inclined surface, into the feed well so that, in use, clarified liquid
passes from the underside of the surface over its upper edge, along the
conduit, and into the feed well.@  (My emphasis.)  The appellants'
confusion arose from the fact that the underlined Amay@ was consistently
rendered as Amust@ in the heads of argument.  Also, they relied heavily on
the drawings which show two examples of the use of a conduit, in both
instances connected to the cone, thereby suggesting that claims must be
based on examples and may not be based upon a general disclosure.
Eventually it was conceded, as it was conceded before Mynhardt J, that
the specification did not require a connection between the static inclined

surface (in my example, the inverted cone) and the conduit.
[26] The retreat was a repeat of the events in the court below.
The alternative argument there and here was that the integer meant that
the conduit could be Aremote@ from the static inclined surface, something
not envisaged by the unamended specification.  I have difficulty with the
argument.  The integer does not use the term Aremote@, nor does it imply
that the conduit can be Afar apart@ (the meaning of remote) from the
upper end of the static inclined surface.  The conduit is defined by
function in the body of the specification: it must convey the liquid from
the apex of the cone to the feed well.  The same applies to the integer.
The conduit must be adapted in use to receive liquid from the upwardly
extending pathway and to lead the liquid to the feed well.  If it is so
adapted, it cannot be Aremote@ or Afar apart@ from the upper edge of the
cone.

[28] For the sake of completeness I revert to the Mond Nickel
questions.  From what I have said, it follows that the integer was broadly
described in the original specification,  that nothing therein is
inconsistent with the integer and that the specification is not wholly
silent on the matter.
[29] In the result the appeal is dismissed with costs, such costs to

include those consequent upon the employment of two counsel.

_____________________
L T C HARMS
JUDGE OF APPEAL

AGREE:

VIVIER JA
GROSSKOPF JA
SCOTT JA
MELUNSKY AJA