De Beers Industrial Diamond Division (Pty) Ltd. v General Electric Company (188/87) [1988] ZASCA 82; [1988] 2 All SA 616 (A) (30 August 1988)

De Beers Industrial Diamond Division (Pty) Ltd. v General Electric Company (188/87) [1988] ZASCA 82; [1988] 2 All SA 616 (A) (30 August 1988)

The court held that the respondent had furnished sufficient reasons for the proposed amendment to its patent specification, both for the original and alternative amendments. The incorporation by reference of the teaching of three United States patents was found to be permissible under South African law, provided the referenced patents were available to trade rivals, and there was no evidence to suggest otherwise. The court found that the definition of 'composite compact' in the amended specification was sufficiently clear to a skilled addressee, and that the claims, even if broad, were not rendered uncertain or ambiguous by the reference to the foreign patents. The appellant failed to...

Citation
[1988] ZASCA 82
Parties
Appellant: De Beers Industrial Diamond Division (Proprietary) Limited; Respondent: General Electric Company
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
30 August 1988
Case Number
188/87
Procedural Posture
Civil Appeal / Appeal From Commissioner of Patents
Outcome
Appeal dismissed with costs, including costs of two counsel.
Judges
Corbett, Hefer, Nestadt, Kumleben, Boshoff
Legal Topics
Patent Amendment, Sufficiency of Claims, Incorporation by Reference, Uncertainty of Claiming
Intellectual Property Civil Procedure Patent Amendment Sufficiency of Claims Incorporation by Reference Uncertainty of Claiming

Case Brief

Summary, issues, holding and outcome

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Parties

De Beers Industrial Diamond Division (Proprietary) Limited

Appellant

General Electric Company

Respondent

Procedural Posture

Civil Appeal / Appeal From Commissioner of Patents

Legal Issues

  1. 1 Whether the respondent's application to amend its patent specification complied with statutory requirements.
  2. 2 Whether the proposed amendment would render the patent claim invalid due to uncertainty of claiming.
  3. 3 Whether incorporation by reference of foreign patents in the specification is permissible under South African law.

Ratio Decidendi

The court held that the respondent had furnished sufficient reasons for the proposed amendment to its patent specification, both for the original and alternative amendments. The incorporation by reference of the teaching of three United States patents was found to be permissible under South African law, provided the referenced patents were available to trade rivals, and there was no evidence to suggest otherwise. The court found that the definition of 'composite compact' in the amended specification was sufficiently clear to a skilled addressee, and that the claims, even if broad, were not rendered uncertain or ambiguous by the reference to the foreign patents. The appellant failed to...

Court Disposition

Appeal dismissed with costs, including costs of two counsel.

Orders

  • The appeal is dismissed.
  • The appellant is ordered to pay the costs of the appeal, including the costs of two counsel.