Explosive argument shows every word counts in a patent claim

By Werner van der Merwe, DM Kisch
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In the matter of African Explosives v Sasol Dyno Nobel, the Commissioner of Patents, seated in Pretoria in South Africa, was tasked to adjudicate whether two amendments of the claims of Sasol’s patent should be allowed, or set aside.

Werner van der Merwe DM Kisch律师事务所 律师 Attorney DM Kisch
Werner van der Merwe
DM Kisch律师事务所
律师
Attorney
DM Kisch

The patent in question is South African patent number 1991/2194, entitled “Low-energy blasting initiation system and surface connection thereof”. The patent was granted on 29 January 1992, with the specification as originally filed. The Registrar of Patents granted the first amendment on 14 August 1992, and the second amendment on 25 May 2004.

In bringing the application, African Explosives contended that the first amendment should be set aside because it fell foul of section 51(7) of the Patents Act No. 57 of 1978. Section 51(7) stipulates that: “No amendment of a complete specification which has become open to public inspection after the publication of the acceptance of the specification in terms of section 42 shall be allowed if the specification as amended would include any claim not wholly within the scope of a claim included in the specification before amendment.”

The complaint

The specific complaint surrounding the first amendment of the first claim was with the substitution of the words “surface connection” with “surface connector block”.

African Explosives argued that this substitution served to broaden the scope of the first claim, and so contravened the provisions of section 51(7). African Explosives stated that “connection” means the state of being connected, and a claim directed to a “block” is restricted to a block, and did not extend to components that are connected to the block, or which are connected to one another by means of the block. The amendment from a particular kind of connection to a particular kind of a connector for making a connection extended beyond the scope of the claim.

Two meanings

On behalf of Sasol, it was stated that from the specification as originally filed, the word “connection” has two meanings – firstly, “being connected or related”, and secondly, “a connecting part”. On a proper reading of the specification, and from the context of the first claim, the word “connection” has the second meaning of “a connecting part”. A “connection” included, but is wider in scope than, a “connector block” and therefore the first claim as amended was fully within the scope of the first claim of the specification as originally filed, albeit narrower in scope.

The court held that in comparing and interpreting both the amended and unamended claim, an objective test is to be applied and the words used must be interpreted in their ordinary grammatical sense.

The word “connection” meant a connecting part because, if read in context, it comprised or consisted of certain features. These features are particular to an object and not to “a state of connection”. The connection was a connecting part that is not narrower than a connector block.

The court accordingly held that the specification as amended did not include any claim not wholly within the scope of a claim included in the specification before amendment.

The second amendment

In respect of the second amendment, African Explosives contested that the amendment was made in conflict with the provisions of section 51(6) of the act, which reads: “No amendment of a complete specification which becomes open to public inspection after the publication of the acceptance of the specification in terms of section 42, whether before or after if so becomes open to public inspection, shall be allowed if (a) the effect of the amendment would be to introduce new matter or matter not in substance disclosed in the specification before the amendment; or (b) the specification as amended would include any claim not fairly based on matter disclosed in the specification before amendment.”

With respect to the second amendment, Sasol introduced specific features to a slot in the first claim and attributed a specific layout to transmission tubes in claim seven of the specification, of which features and layout were not included in claims one and seven, respectively, before amendment.

It was contended by African Explosives that the features and layout were not disclosed in the specification before amendment, and as far as those claims were concerned the specification included new matter and were not fairly based on matter disclosed in the specification before amendment.

In its answer, Sasol denied the allegations raised by African Explosives, and relied particularly on the figures of the specification in advancing its case.

The decision

In arriving at its decision, the court referred to the case of Bateman Equipment and Another v Wren Group, where the Supreme Court of Appeal of South Africa set out the test to be applied when considering whether an amendment offended against section 51(6) of the act.

Firstly, it should be determined whether the objectionable integer has been broadly described in the original specification; secondly, consider whether there is anything in the original specification inconsistent with the integer; and finally, consider whether the original specification is wholly silent on the integer.

The court satisfied itself with regards to the test above and accordingly held that both amendments were allowable. The court dismissed the application with costs.

The judgment is interesting in that it demonstrates that in a patent litigation matter the result can often hinge on the interpretation that a court affords to a single word.

Therefore, every word used in a patent claim should be subjected to careful prior consideration as it could potentially, in future, take centre stage in a patent litigation matter.

Werner van der Merwe is an attorney at DM Kisch

DM Kisch

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