News and Views
CLAIMING PRIORITY: A MATTER OF FACT
Section 25(7) of the Patents Act No 57 of 1978 explained.
An invention can only be patented if it does not form part of the state of the art at the time of the application for the patent. The relevance of prior art, the Nemesis of any prospective patentee, is further defined in S25(7) of the Patents Act No 57 of 1978 – the state of the art includes matter not yet available to the public at the time of establishing an earliest priority date, provided that an application containing such matter became open to public inspection, and that the application’s priority date precedes that of the relevant application.
The reasoning behind this is sound: granting monopolies on the same subject matter to separate entities in the same country is nonsensical and would inevitably lead to absurd conflicts. It is critical, however, to understand the scope of the “matter” referred to in S25(7). Conflicting judgments have been handed down by the courts and generally there are two main schools of thought: The first, termed the “prior claims approach”, is based on the premise that the scope of protection of a patent is contained in the claims and therefore the fictitious publication date predated to the earliest priority date of the application should only be extended to the claimed invention. The second, termed the “whole contents approach”, believes that it is against public interest to grant a patent on matter that has already been publically disclosed in a prior application, albeit not yet published and not part of the claimed invention.
According to the Strasbourg Convention, a member country is free to adopt either approach. In South Africa, the argument was finally put to bed in the case of Deton Engineering (Pty) Ltd and another v John Paul McKelvey and others. The facts of this case revolved around two granted patents, and the invalidity of the second (the “Deton patent”), as a result of it being anticipated by the first (the “CMI patent”).
All of claims 1, 2, 4 and 7 of the Deton patent were disclosed in the body of the CMI patent, but, importantly, not in its claims. Even though not yet published at the time, the CMI patent’s earliest priority date preceded that of the Deton patent. Its relevance was thus unknown to Deton Engineering at the time of its application.
In the case that followed, Deton Engineering contended that, in accordance with S31(1)(b), South Africa was in support of the “prior claim approach” as, at the time, it related the priority date of the matter to the claim with the earliest priority date.
This argument was supported by S32(3)(d) which specifically stated that the ambit of the protection of an invention had to be contained in the claims.
Van Dijkhorst J held that the object of S25(7) was to avoid double patenting, that only claimed matter could have a priority date, and that the matter not claimed thus only formed part of the prior art from the day of publication. Judgment was handed down in favour of the validity of the Deton patent and the “prior claim approach”.
The case was, however, brought before the Supreme Court of Appeal. Harms JA contested that S25(7) specifically mentions “matter” and not “claims”, which, he felt, pointed towards the “whole contents approach”.
Harms JA further emphasized the term “matter contained in an application” used in S25(7)(b), and held that, since S30, read with S32(2) prescribes that an application for a patent can be either in the form of a complete specification or a provisional specification, which does not need to have claims as long as it fairly describes the invention, S25(7) cannot be construed to exclude matter contained in a specification which is not claimed.
Further, the Patents Act generally relates “matter” to disclosures in the body of the specification that can support a claim. Obviously, if at a later stage, CMI were to, by way of amendment, include matter contained in the body of the specification into the claim, this would lead to double patenting, which destroys the object of creating a monopoly.
Harms JA thus concluded that it was never the intention of the legislature to follow the “prior claims approach” and that any inference to this end would be incorrect. The appeal was upheld with costs.
S33 had since been amended and no longer links priority to the claim with the earliest priority date, but rather to matter contained in the application from which priority is claimed. This clearly brings the Patents Act in line with the “whole contents approach”.Â
At van Rooy
Director
Patent Attorney
Head: Patent Department &
Chair: Executive Committee
Email atv@kisch-ip.com
Tel +27 10 510 1777
Louw Steyn
Associate
Patent Attorney
Email louws@kisch-ip.com
Tel 011 324 3152
Pretty nice post. I just stumbled upon your blog and wanted to mention that I’ve truly enjoyed surfing around
your weblog posts. After all I will be subscribing for your rss feed and I hope
you write again very soon!
Thank you for sharing your thoughts. I really appreciate your efforts and I
will be waiting for your further write ups thanks once again.
naturally like your web site however you have to take a look at the spelling
on several of your posts. Many of them are rife with spelling
problems and I in finding it very bothersome to tell the truth however
I’ll definitely come again again.
magnificent put up, very informative. I wonder why the opposite experts of this sector don’t realize
this. You must continue your writing. I’m sure, you’ve a huge readers’ base already!
Good article. I absolutely love this website. Thanks!
I am sure this piece of writing has touched all the internet visitors, its really really nice post on building up new weblog.
I do agree with all of the concepts you’ve offered in your post.
They are very convincing and can certainly work. Nonetheless,
the posts are too quick for newbies. Could you please lengthen them a little from next time?
Thanks for the post.
I am actually glad to glance at this blog posts which
consists of lots of valuable data, thanks for providing these
kinds of statistics.
Good post. I definitely love this site. Stick with it!
Hi Dear, are you genuinely visiting this site daily, if so
after that you will definitely get nice know-how.
Thanks for any other wonderful post. Where else could anyone get
that kind of information in such a perfect means of writing?
I’ve a presentation next week, and I’m on the search for such info.
Its like you read my mind! You seem to know so much about this,
like you wrote the book in it or something. I think that you could do with a
few pics to drive the message home a bit, but other than that, this is wonderful blog.
An excellent read. I will definitely be
back.
I loved as much as you’ll receive carried out right here.
The sketch is tasteful, your authored material stylish. nonetheless,
you command get bought an nervousness over that you wish be delivering the following.
unwell unquestionably come further formerly again since exactly the same nearly very often inside case you
shield this increase.
I all the time emailed this weblog post page to all my friends, as if like to read it then my
contacts will too.
I have read so many articles concerning the blogger lovers except this paragraph is
really a nice post, keep it up.
I believe that is among the most important information for me.
And i am satisfied studying your article. But should commentary on few common things, The web site style is wonderful, the articles is
in point of fact nice : D. Good process, cheers
Hi! This is my first visit to your blog! We are a group of volunteers and starting a new project in a community in the
same niche. Your blog provided us beneficial information to work on. You
have done a outstanding job!
Thank you for the good writeup. It in reality was
once a amusement account it. Glance advanced to far introduced agreeable from you!
However, how could we be in contact?
Hey there! This is my first visit to your blog! We are a group of volunteers and starting a new
initiative in a community in the same niche. Your blog
provided us useful information to work on. You have
done a outstanding job!
It’s fantastic that you are getting thoughts from this article as well as from our discussion made here.
I’m gone to convey my little brother, that he
should also pay a quick visit this weblog on regular basis to take updated from hottest
news.
I think that what you posted made a lot of sense. But, what about this?
what if you added a little information? I am not suggesting your information isn’t good, but suppose you added something that makes people want more?
I mean CLAIMING PRIORITY: A MATTER OF FACT – KISCH IP is a little plain. You
might look at Yahoo’s home page and watch how they create post headlines
to get viewers to open the links. You might add a video or
a picture or two to get readers excited about what you’ve got to say.
Just my opinion, it might bring your website a little livelier.
Attractive section of content. I just stumbled upon your web site and in accession capital to assert that I get actually enjoyed account
your blog posts. Anyway I will be subscribing to your feeds and even I achievement
you access consistently rapidly.
That is really interesting, You are a very professional blogger.
I have joined your feed and look forward to seeking more of your excellent
post. Also, I have shared your website in my social networks
Good day! I know this is kinda off topic but I’d figured I’d ask.
Would you be interested in trading links or maybe guest authoring a blog post or vice-versa?
My site goes over a lot of the same subjects as yours and I believe we could greatly
benefit from each other. If you’re interested feel free to shoot me an e-mail.
I look forward to hearing from you! Fantastic blog by the way!
Today, while I was at work, my cousin stole my
apple ipad and tested to see if it can survive a thirty foot
drop, just so she can be a youtube sensation. My iPad is now broken and she
has 83 views. I know this is totally off topic but I
had to share it with someone!
Excellent blog here! Also your web site loads up very fast!
What host are you using? Can I get your affiliate link to
your host? I wish my web site loaded up as quickly as
yours lol
It’s awesome for me to have a website, which is good in favor of
my experience. thanks admin
Thanks for a marvelous posting! I truly enjoyed reading it, you’re
a great author.I will be sure to bookmark your blog and will
come back very soon. I want to encourage you to ultimately continue your
great posts, have a nice holiday weekend!
Thank you for the auspicious writeup. It in fact was a amusement account it.
Look advanced to far added agreeable from you! However,
how can we communicate?
What’s up, just wanted to mention, I loved this post. It was practical.
Keep on posting!
This excellent website really has all the information I wanted about this subject and didn’t
know who to ask.
Hi! I’ve been reading your web site for some time now and finally got the courage to go ahead
and give you a shout out from Houston Texas! Just wanted to
tell you keep up the fantastic job!
I read this article fully about the comparison of hottest and previous technologies, it’s amazing
article.
I simply couldn’t depart your site before suggesting that I actually enjoyed the usual info a
person provide on your visitors? Is going to be again often in order
to investigate cross-check new posts
Yes! Finally someone writes about website.
I don’t even know how I finished up right here, however I thought this
post was once good. I do not know who you might be
but definitely you are going to a well-known blogger for those who are not already.
Cheers!
Thanks for finally talking about > CLAIMING PRIORITY:
A MATTER OF FACT – KISCH IP < Loved it!
Your style is so unique compared to other folks I’ve read stuff from.
Thank you for posting when you have the opportunity,
Guess I will just book mark this blog.
I visited many websites except the audio feature for audio songs current at this site is truly excellent.
hi!,I really like your writing so a lot! share we be in contact extra approximately your post on AOL?
I require an expert in this house to resolve my problem. May
be that’s you! Looking forward to peer you.
bookmarked!!, I really like your web site!
Wonderful, what a website it is! This web site gives useful data
to us, keep it up.
Hey just wanted to give you a quick heads up. The text in your post seem
to be running off the screen in Ie. I’m not sure if
this is a formatting issue or something to do with internet browser compatibility but I figured I’d post to let you
know. The style and design look great though! Hope you get
the issue solved soon. Many thanks
Wonderful items from you, man. I’ve remember your stuff previous to and you’re simply too excellent.
I really like what you’ve bought here, certainly like what you’re saying and the way in which in which you
assert it. You make it entertaining and you continue to care for to keep it smart.
I cant wait to learn far more from you. That is
actually a tremendous web site.
I was suggested this web site by my cousin. I’m not sure whether this post is written by him
as no one else know such detailed about my trouble.
You’re wonderful! Thanks!
What i don’t understood is in fact how you’re not actually a lot more
neatly-favored than you may be now. You are very intelligent.
You realize thus significantly in relation to this matter,
produced me for my part consider it from
numerous various angles. Its like women and men are not involved until it is one
thing to accomplish with Woman gaga! Your personal stuffs
excellent. Always deal with it up!
If some one desires expert view regarding blogging and site-building afterward i recommend him/her to go to see this website, Keep up the pleasant job.
I am really impressed along with your writing talents as smartly as with the layout for your weblog.
Is that this a paid theme or did you customize it your self?
Either way stay up the excellent quality writing, it’s rare to peer
a nice blog like this one today..
This design is steller! You most certainly know how to keep a
reader entertained. Between your wit and your videos, I was almost moved to start my own blog (well, almost…HaHa!) Excellent job.
I really loved what you had to say, and more than that, how you presented it.
Too cool!
Hey I know this is off topic but I was wondering if you knew of any widgets I could add to my blog that automatically
tweet my newest twitter updates. I’ve been looking for a plug-in like this for
quite some time and was hoping maybe you would have some experience
with something like this. Please let me know if you run into anything.
I truly enjoy reading your blog and I look forward to your new updates.
I have read so many posts on the topic of the blogger lovers
however this post is actually a good article, keep it up.
It’s a pity you don’t have a donate button! I’d definitely donate to this fantastic blog!
I guess for now i’ll settle for book-marking and adding your RSS feed to my Google account.
I look forward to new updates and will share this site with my
Facebook group. Talk soon!
I really like what you guys are usually up too. This type of clever
work and coverage! Keep up the fantastic works guys I’ve added you guys to our blogroll.
I believe this is one of the most important info for me.
And i am happy studying your article. However want to remark on few general issues, The web site style is great,
the articles is in reality great : D. Just right activity, cheers
That is a good tip especially to those new to the blogosphere.
Brief but very accurate information… Thank you for sharing this one.
A must read post!
We are a group of volunteers and opening a new scheme in our community.
Your website provided us with valuable information to work on. You have
done a formidable job and our entire community will be grateful to you.
Heya i’m for the primary time here. I came across this
board and I in finding It truly useful & it helped me out much.
I’m hoping to offer something again and aid others like you aided me.
Undeniably consider that which you said. Your favourite reason appeared
to be at the net the simplest thing to keep in mind of.
I say to you, I certainly get irked at the same time as other folks think about concerns that they plainly don’t understand about.
You managed to hit the nail upon the highest and outlined
out the entire thing without having side effect , people could take
a signal. Will likely be again to get more. Thank you
bookmarked!!, I love your site!
Hi, I wish for to subscribe for this webpage
to get most up-to-date updates, so where can i do it
please help out.
What a material of un-ambiguity and preserveness of precious knowledge
concerning unpredicted feelings.
Admiring the persistence you put into your blog and detailed information you present.
It’s nice to come across a blog every once in a
while that isn’t the same out of date rehashed material.
Fantastic read! I’ve saved your site and I’m adding your RSS feeds to my Google account.
I read this piece of writing completely concerning the resemblance
of most recent and previous technologies, it’s awesome article.
I used to be recommended this website through my cousin. I am not positive whether or not this post is
written by him as nobody else recognize such exact about my trouble.
You are amazing! Thanks!
It is perfect time to make some plans for the future and
it’s time to be happy. I have read this post and if I could I want
to suggest you some interesting things or suggestions.
Perhaps you could write next articles referring to this article.
I desire to read even more things about it!