Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others

Ausplow (Pty) Ltd, an Australian company, held South African patent ZA 95/0812 for improvements to seeding machinery. The patent was filed on 2 February 1995 and granted on 29 November 1995. Ausplow brought an infringement action against Northpark Trading 3 (Pty) Ltd. Northpark counterclaimed for revocation of the patent on grounds including lack of novelty and obviousness. Southwood J, sitting as Commissioner of Patents, held that claim 1 was valid and infringed. On appeal, the Supreme Court of Appeal (SCA) found claim 1 to be invalid for obviousness (based on a mosaic of prior art documents Dreyer and Anderson). The SCA ordered provisional revocation but allowed Ausplow one month to apply to amend the patent. Ausplow applied to amend claims 1 and 13 by introducing an additional integer (element E - a second mounting means for adjustably attaching ground engaging means). Murphy J, sitting as Commissioner of Patents, dismissed the amendment application, holding the amendments would not cure the invalidity. Ausplow appealed with leave.

• Whether the patentee complied with the SCA's order allowing amendment
• Whether the proposed amendments conflicted with sections 51(6) or 51(7) of the Patents Act (prohibition on new matter)
• Whether the patent as amended would be valid (particularly whether it remained obvious)
• Whether the court should exercise discretion to refuse the amendment on grounds of delay or reprehensible conduct
• The proper approach to assessing obviousness under section 25(10) of the Patents Act 57 of 1978
• Whether an inventive step must be stated in the patent specification
• Whether advantages of an invention not mentioned in the specification can be considered in assessing inventiveness

The appeal was upheld with costs (including costs of two counsel, jointly and severally against the first, third and fourth respondents). Paragraphs 3, 4 and 5 of Murphy J's order were set aside and replaced with: - The application to amend the specification of Patent ZA 95/0812 is granted - The provisional order of revocation lapses - The parties are to pay their own costs (in the court below)

1. Obviousness under section 25(10) of the Patents Act is an objective factual question: whether the invention would be obvious to a person skilled in the art having regard to the prior art, not what the inventor thought or what appears obvious with hindsight. 2. The invention to be assessed for novelty and inventiveness is what is claimed in the claims, not generalizations derived from the specification as a whole. There is no legal requirement for the inventive step to be stated in the specification. 3. Evidence of advantages of an invention not mentioned in the patent specification is admissible and relevant to the assessment of inventiveness. The objection to 'new matter' in section 51(6) relates to amendments to the specification itself, not to evidence adduced in proceedings. 4. For combination patents (mechanical apparatus with interacting elements), the combination as a whole must be assessed for obviousness, not each constituent element in isolation. 5. Where a party seeking revocation fails to prove that an added integer in an amended claim was disclosed in the prior art, and fails to establish that the amended claim is obvious to the skilled person, the amendment application should be granted. 6. A patentee's delay in seeking amendment is not culpable where the basis for invalidity (a particular mosaic of prior art) was not apparent until the appeal court's judgment.

1. The reference in the SCA's earlier judgment to section 68 of the Patents Act (which applies only where a claim is found valid and infringed) was an error, but the court had power to suspend revocation under section 61(3) which applies to revocation applications. 2. The court quoted with approval the European Patent Office principle that 'the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense' and should proceed 'with synthetical propensity i.e. building up rather than tearing down' - 'a mind willing to understand not a mind desirous of misunderstanding'. 3. The court noted it is customary (though not always done) for courts finding invalidity to consider all grounds of invalidity, not just the ground on which invalidity is found, to assist the court dealing with any subsequent amendment application. 4. Whether a court has discretion in the strict sense to refuse an amendment that passes the legal tests for permissibility and validity has not been finally decided and did not need to be decided in this case. 5. An inventive step does not require that the invention be better than prior solutions - a new analgesic need not be better than Aspirin to be inventive; it may do the same thing in a sufficiently different manner.

This case is significant for South African patent law because it: 1. Clarifies the legal framework for assessing obviousness under the Patents Act 57 of 1978, emphasizing it is an objective factual test focused on what would be obvious to the skilled person, not what the inventor thought or what appears obvious with hindsight 2. Confirms that the invention to be assessed for validity is what is claimed, not generalizations from the specification as a whole 3. Establishes that there is no requirement for a patentee to state the inventive step or advantages in the specification, and evidence of advantages not mentioned in the specification is admissible on the issue of inventiveness 4. Addresses the procedural framework for amendment applications following revocation orders, clarifying the court's power under section 61(3) to suspend revocation pending amendment 5. Reinforces that for combination patents, the combination as a whole must be assessed for obviousness, not each element in isolation 6. Provides guidance on when discretion to refuse an otherwise proper amendment might be exercised (and when it should not be)