McKelvey and Others v Deton Engineering (Pty) Ltd and Another (657/95) [1997] ZASCA 57; 1998 (1) SA 374 (SCA); [1997] 3 All SA 569 (A); (28 May 1997)

McKelvey and Others v Deton Engineering (Pty) Ltd and Another (657/95) [1997] ZASCA 57; 1998 (1) SA 374 (SCA); [1997] 3 All SA 569 (A); (28 May 1997)

The Supreme Court of Appeal held that section 25(7) of the Patents Act 57 of 1978 adopts the 'whole contents' approach, not the 'prior claim' approach, for determining novelty. This means that the disclosure in the body of a prior patent specification, even if not claimed, can destroy the novelty of a subsequent patent claim if the priority date of the disclosed matter is earlier than the relevant claim. The court found that the legislative history and statutory language support this interpretation, and that the object of section 25(7) is to extend the state of the art beyond publicly available matter to include matter disclosed in prior patent applications. Accordingly, claims 1, 2, 4, 5...

Citation
[1997] ZASCA 57
Parties
Appellant: John Paul McKelvey; Appellant: New Concept Mining (Pty) Ltd; Appellant: Ceramic Linings (Pty) Ltd; Respondent: Deton Engineering (Pty) Ltd; Respondent: Chemical, Mining and Industrial Services (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
28 May 1997
Case Number
657/95
Procedural Posture
Civil Appeal / Appeal From the Commissioner of Patents
Outcome
Appeal upheld with costs against the first respondent. The order of the court a quo is substituted to refuse the application for an interim interdict or interdict in case number 90/5999. Costs are to be paid jointly and severally by the applicants to the respondents.
Judges
E M Grosskopf, Nienaber, Harms, Schutz, Plewman
Legal Topics
Patent Novelty, Whole Contents Approach, Prior Claim Approach, Double Patenting, Priority Date, Patent Infringement
Intellectual Property Patent Novelty Whole Contents Approach Prior Claim Approach Double Patenting Priority Date Patent Infringement

Case Brief

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Parties

John Paul McKelvey

Appellant

New Concept Mining (Pty) Ltd

Appellant

Ceramic Linings (Pty) Ltd

Appellant

Deton Engineering (Pty) Ltd

Respondent

Chemical, Mining and Industrial Services (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From the Commissioner of Patents

Legal Issues

  1. 1 Does section 25(7) of the Patents Act 57 of 1978 adopt the 'whole contents' or 'prior claim' approach for determining novelty?
  2. 2 Are claims 1, 2, 4, 5 and 7 of the Deton patent invalid for lack of novelty in light of the CMI patent specification?
  3. 3 Is the Commissioner of Patents empowered to grant relief in infringement proceedings where one or more claims of a patent are invalid?

Ratio Decidendi

The Supreme Court of Appeal held that section 25(7) of the Patents Act 57 of 1978 adopts the 'whole contents' approach, not the 'prior claim' approach, for determining novelty. This means that the disclosure in the body of a prior patent specification, even if not claimed, can destroy the novelty of a subsequent patent claim if the priority date of the disclosed matter is earlier than the relevant claim. The court found that the legislative history and statutory language support this interpretation, and that the object of section 25(7) is to extend the state of the art beyond publicly available matter to include matter disclosed in prior patent applications. Accordingly, claims 1, 2, 4, 5...

Court Disposition

Appeal upheld with costs against the first respondent. The order of the court a quo is substituted to refuse the application for an interim interdict or interdict in case number 90/5999. Costs are to be paid jointly and severally by the applicants to the respondents.

Orders

  • The appeal is upheld with costs, including costs of two counsel, to be borne by the first respondent only.
  • Paragraph 3 of the order of the court a quo is substituted with: 'In case number 90/5999 the application for an interim interdict or interdict is refused.'