IP ENSight | 31 January 2017

South African patent decision: not shooting from the hip

by Rowan Forster

In December 2016, the South African Supreme Court of Appeal (“SCA”) handed down a rare patent judgment in Pasadena Leather Products CC t/a Pasadena Products and another v Resca and another. In a very measured judgment, the SCA sets out in clear and basic terms how one goes about establishing whether or not a patent has been infringed. This judgment will therefore be very useful for laymen and non-IP specialists.

We’re not going to go into the technical details of the judgment in this article. Suffice to say that two South African inventors patented a holster – described simply as a “lockable holster” – that secures the gun through the presence of a second “camming surface”. On discovery that a competitor was offering a secure holster for sale – one that was referred to as a “swivel holster” – the inventors sued for patent infringement. The inventors were successful in their infringement claim in the first court, but the competitor took this decision on appeal to the SCA.

The SCA judgment was handed down by Judge Leach. The judge dealt with the technical issues in some detail. But it’s the judge’s clear exposition of the law that’s really worth discussing. The judge seemingly set out to simplify patent law.

The judge kicked off by explaining that a patent document comprises a description or specification. What this document does is describe the invention in a way that someone who understands the technology involved – a so-called “person skilled in the art” – can understand.

The judge then went on to explain that a patent also comprises claims. What these claims do is further define and set limits to the monopoly that’s sought. Claims have therefore been described by the courts as the “fences” or “boundaries” of the patent. One court described the effect of the claims as follows: “What is not claimed is disclaimed.” Another court described claims in these rather quaint prospecting or mining terms: “It is not sufficient for the inventor to discover the gold mine – he must also peg out his claim. Outside the pegs, the gold, if it is there, is free to all.”

So, just how are claims to be interpreted? Well, as the judge said, the court must adopt a purposive construction or, to put it another way, what the judge must avoid is a literal interpretation. So, basically, the legal experts who are charged with determining what the patent is all about must go against type. As one famous old case tells us, what they need to do is avoid “the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge”.

So, why a purposive construction instead of a literal interpretation? Well, it’s to make sure that the court gets to the nub of the matter. What the court needs to do is “establish what were intended to be essential elements of the claim, regard being had to the context of the invention as a whole”.

The final step in the process is to determine whether or not all the essential elements of the claim, referred to in the world of patents as “integers”, have been taken. As the judge said: “The patentee must show that the defendant has taken each and every one of the essential integers of the patentee’s claim. Therefore if, on its true construction, the claim in a patent claims a particular combination of integers and the alleged infringer of it omits one of them he will escape liability.”

It’s here that the infringement claim failed. The particular claim of the patented lockable holster that was in issue comprised 13 integers. One of these integers was the second camming surface that caused the gun to be locked in. The holster sold by the competitor, however, did not involve a second camming surface. So, having omitted one of the integers of the patented invention, the competitor escaped liability.

We hope that this judgment will help to demystify patent law a little bit.


Rowan Forster

patent attorney | director | IP
cell: +27 83 440 3170

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