By Bryce Matthewson

It is a basic tenet of patent law that an invention must have utility in order to be capable of patent protection. This principle is recognised by the Patents Act 57 of 1978 (the current Act) as one of the essential requirements of patentability and thus a lack of utility is a ground of revocation of a patent. However, to date, this ground of revocation has not received much judicial attention. This has changed in a recent decision by the Supreme Court of Appeal (SCA) in Marine 3 Technologies Holdings (Pty) Ltd v Afrigroup Investments (Pty) Ltd and Another 2015 (2) SA 387 (SCA). Unfortunately the decision is based on what is, in my opinion, an erroneous interpretation of the provisions of the current Act.

The background to Marine 3 can, for present purposes, be summed up as follows: The applicant (patentee) sought to enforce its patent against the respondents on the basis that they were infringing the patent. The respondents, by way of a counterclaim, applied for the revocation of the patent on the ground that, among others, the patent lacked utility. The Commissioner of Patents found that the patent lacked utility and accordingly revoked the patent. The parties subsequently settled the matter. However, the applicant proceeded with an unopposed appeal against the Commissioner’s decision to revoke the patent.

The basis of a claim of lack of utility is found in s 61(1)(d) of the current Act, which reads that a patent is liable to be revoked if ‘… the invention as illustrated or exemplified in the complete specification concerned cannot be performed …’ (my italics). A lack of utility means that the patent is not useful; that it is not effective to produce the result aimed at or promised. The court in Marine 3, at para 7 of its judgment, refers to the ground of revocation without the above emphasised portion. The result of this is, in my opinion, a misinterpretation of the law.

To understand the misinterpretation it is necessary to start with the ground of lack of utility as it existed under the previous Patents Act 37 of 1952 (old Act). The ground of revocation under the old Act was formulated as follows: A patent is liable to be revoked if ‘the invention is not useful’. Of importance is that ‘the invention’ was determined to mean the invention as claimed (see Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger Aktiengesellschaft 1960 (3) SA 747 (A) at 756 E – F). Thus, under the old Act, consideration was given to whether the invention as claimed was effective at producing the result aimed at or promised. By contrast, the current Act focuses on ‘the invention as illustrated or exemplified in the complete specification’. The distinction between the invention as claimed and the invention as illustrated or exemplified is crucial. Under the old Act, if anything falling within the scope of a claim did not work the claim was invalid. Under the current Act, it is necessary to look at what is illustrated or exemplified in the specification. As such, if any illustrated embodiment or example does not work, then the patent lacks utility. In other words, under the old Act lack of utility applied to the claims of the patent whereas under the current Act lack of utility applies to the specification and more particularly to the illustrated embodiments and examples. Thus for the purposes of this ground, under the current Act, the claims of the patent are irrelevant.

The result of the changes brought about in the current Act has been a significant curtailing of the number of cases in which lack of utility is pleaded. I submit that between 1967 and Marine 3, the issue only arose in two reported judgments whereas it had been a common ground of revocation under the old Act.

The court, acting on the basis of the misquoted legislation and relying on a decision of the Transvaal Provincial Division under the old Act (see para 12, relying on Transvaal and Orange Free State Chamber of Mines v General Electric Co 1967 (2) SA 32 (T)), ‘begin[s] with a consideration of the meaning of the claims of the patent’. The court, having construed the claims of the patent, goes on to consider how the invention, as claimed, would be viewed to a person skilled in the art (at para 14).

This approach of the court is in direct contrast with two previous decisions made under the current Act (see Coflexip SA v Schlumberger Logelco Inc 2001 BIP 1 (CP) and Circuit Breaker Industries Ltd v Barker & Nelson (Pty) Ltd 1993 BP 431 (CP)). In the decision of the court of the Commissioner of Patents in the Coflexip matter, the Commissioner clearly focuses his attention on the illustrations and embodiments of the invention described in the specification. There is no reference at all to the claims of the patent. Similarly, in the earlier decision of the Commissioner in the Circuit Breaker matter, the Commissioner focuses on the illustrations or figures, and again there is no reference to the claims of the patent. It is my view that the approach adopted by the Commissioner in the Coflexip and Circuit Breaker matters are consistent with a proper interpretation of s 61 of the current Act, and in the absence of a compelling reason why this interpretation should not be adopted, the approach taken by the court in Marine 3 is an error in interpretation. Certainly, the court in Marine 3 gave no reason for applying lack of utility to the claims rather than the specification.

The court ultimately concluded in Marine 3 that the invention of claim 1 of the patent does have utility, and in doing so overturned the decision of the court a quo.

It should be noted that on the facts of the matter, it is possible or even likely, that the court might have reached the same conclusion that there was no lack of utility, had it rather given consideration to the invention as illustrated or exemplified in the specification; however, this does not soften the blow of the incorrect interpretation being given to the law.

The failure of the court to deal with its deviation from the two previous decisions, and its failure to give reasons for its interpretation, leads me to believe that the court based its decision on the misquoted legislation without having regard to the two previous decisions. This decision clearly illustrates the need for patent disputes to be handled by a specialist court both in the first instance and on appeal.

On the basis of the interpretation adopted by the court in Marine 3, an interpretation that will be binding until overturned by a later decision of the same court, there may be new life given to the issue of lack of utility, a life which is, in my opinion, clearly not intended by the legislature. It is hoped that the issue of lack of utility will come before the SCA sooner rather than later so that the interpretation can be corrected.

•         See 38

Bryce Matthewson BSc (Chem; Applied Chem) LLM (Wits) is an attorney at Spoor & Fisher in Centurion.

This article was first published in De Rebus in 2015 (June) DR 44.