for by KimberlyClark Corporation of the United States of America as a convention application on 17 December 1976.
Priority was claimed on the basis of a United States patent application made on 29 March 1976. The patent was
granted on 5 July 1978 under the provisions of the repealed Patent Act 37 of 1952. In terms of section 3(1)(a) of
the present Act (which came into force on 1 January 1979) the validity of a patent for all purposes is to be
determined under the provisions of the 1952 Act but any amendments to the complete specification sought after
January 1979 had to be made in terms of the present Act.
On 19 February 1982 KimberlyClark Corporation applied in terms of section 51 of the Act, which deals with
amendments to patent specifications, for the first amendment, giving as its reason for so doing a desire "to limit
and clarify the scope of the claims". This amendment was allowed by the Registrar of Patents ("the registrar") and
the amendment was entered in the register.
On 15 November 1990 the patent was assigned to appellant. On 6 December 1993 appellant applied
(simultaneously) for the second and third amendments. The normal term of the patent had by this time already
expired but had been extended for five years by an order of the Commissioner of Patents. (Details of this order are
not given in the record but the order would have been made in terms of section 39 of the 1952
View Parallel Citation
Act on the grounds that the patentee had not derived adequate remuneration. The extended term expired on 29
March 1998.) The second application was purportedly made in terms of section 50 of the Act which deals with the
correction of clerical errors and the amendment of documents for the amending of which no express provision is
otherwise made in the Act. The third amendment (an amendment in precisely the same terms as the first
amendment) was sought again in terms of section 51 of the Act. The reasons for this doublebarrelled procedure is
made evident by the reasons for the third amendment given in the appropriate form Patents Form 13. I quote the
substance thereof:
"The Patentee hereby applies afresh to amend the complete specification of the above patent as shown on the attached
relevant pages of that specification. The full reasons for making the amendment are as follows:
The claims of the complete specification of the patent were amended in terms of an application to amend made by the then
patentee on 19 February 1982 ('the earlier application to amend'). A copy of the earlier application to amend is annexed
hereto marked 'A'.
In the earlier application to amend, the full reasons were given by the then patentee as being to 'limit and clarify the scope
of the claims'.
The present patentee believes that, in the light of recent judgments of the Commissioner of Patents, the earlier application
to amend could be open to attack by a third party on the basis that the reasons given were not sufficiently 'full', with the
result that the earlier amendment could be set aside by the Commissioner.
The patentee has thus today, on form P4, withdrawn the earlier application to amend, and has abandoned the allowance
thereof and now hereby applies for the allowance of precisely the same amendment as was allowed following the earlier
application to amend.
The nature of the earlier application to amend and the present application is by way of a limitation of the claims of the
patent.
Page 81 of [1998] 3 All SA 77 (A)
The full reasons for making both the earlier and the present applications are to avoid prior art which has come to the
patentee's attention and, more especially, the disclosures contained in the specification of United States patent 3 860 003
granted to Buell.
A copy of the specification of the Buell patent, which was published on 14 January 1975, is annexed hereto marked 'B'."
The application for the second amendment was made on Patents Form 4. The substance is as follows:
"In terms of section 50(1)(b) of the Act and/or regulation 39 of the Patent Regulations, the applicant hereby withdraws an
application to amend the complete specification of the patent made on 19 February 1982; abandons the allowance of that
application to amend; and requests the Registrar to endorse the earlier application to amend, and any entry which may have
been made in the register, accordingly."
Both applications were granted. With what validity is discussed later. They were also entered in the register. Both
were, even if incorrectly made, not a nullity (see Rollamatic Engineering (Pty) Limited v President Steel Corporation Pty
Limited 1973 BP 437 at 400AG).
The court (correctly) observed with regard to the second amendment that the registrar was functus officio after he
had granted the first amendment and was therefore not entitled to grant the second. It also pointed out that the
grant of the second amendment would have had the
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effect of amending the patent (by restoring it to its original form) which could only be done under section 51. It then
held that the second amendment could be set aside in terms of section 51(10). I shall return to this question
presently. As far as the third and first amendments were concerned (to take them in the order in which they must in
the circumstances be dealt with) the court held that the Commissioner in exercising a discretion in terms of section
51(10) of the Act was entitled to set aside an amendment to a patent where there has been noncompliance with
the requirements of subsection (1) of the section. The court then, after an examination of the Buell patent which is
referred to in the "reasons" for the third amendment, concluded that the reasons given for both amendments were