LONRHO LTD v SALISBURY MUNICIPALITY 1970 (4) SA 1 (RA)

1970 (4) SA p1

Citation 1970 (4) SA 1 (RA)

   

Court Rhodesia, Appellate Division

   

Judge Beadle CJ, Macdonald JP and Jarvis AJA

   

Heard April 23, 1970; April 24, 1970

   

Judgment July 2, 1970

   

Annotations Link to Case Annotations

   

 D

Flynote : Sleutelwoorde

Patent - 'The true and first inventor . . . of an invention.' - Includes a 'communicatee' - Chap. 222 (R),
sec. 5.

Headnote : Kopnota

The words 'the true and first inventor . . . of an invention' in section  E 5 of the Patents Act, Chapter
222 (1939 edition) include a 'communicatee'.

Case Information

Appeal from a decision in the General Division. The facts appear from the judgment of BEADLE, C.J.

B. O'Donovan, Q.C. (with him J. C. Andersen), for the appellant.

A. Suzman, Q.C. (with him M. A. A. May, Q.C.), for the respondent.

  F Cur. adv. vult.

Postea (July 2nd).

Judgment
  G BEADLE, C.J.: This is an appeal from an order of the General Division of the High Court dismissing
with costs an exception taken by the plaintiff to the defendant's plea.

The appellant, to whom I will refer as 'the plaintiff', sued the respondent, to whom I will refer as 'the
defendant', for an interdict  H and for damages for an alleged infringement by the defendant of
certain patent rights of which the plaintiff claimed it was the owner.

It appears that in November, 1954, one Stransky, who was' a patent agent in Rhodesia, and who, in
fact, was not the inventor of the apparatus patented, applied for and was granted a patent on the
basis that he was in possession of an invention which had been communicated to him by one
Heinrich from the Union of South Africa. In the terminology of patent law, he was what is known as a
'communicatee'

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of the invention. Some 20 days after Stransky was granted the patent, he assigned it to Heinrich who
remained the registered owner of the patent until 1965 when Heinrich, in turn, assigned it to the
present plaintiff.

  A Sec. 5 of the Patents Act, Chap. 222, 1939 ed. (the Act in force in 1954), provided that 'the true
and first inventor . . . of an invention' may be granted letters patent in respect of that invention.

One of the defences raised by the defendant in its plea was that, as Stransky, though the
'communicatee' of the invention, was neither in law nor in fact 'the true and first inventor' of the
apparatus, he had no  B right to be granted the patent. This being so, the grant was null and void and
Stransky had no rights to assign to Heinrich who, in turn, had none to assign to the present plaintiff.
The plaintiff excepted to this defence and the learned Judge in the Court a quo dismissed the
exception with costs, and the plaintiff now appeals against that decision.

  C The patent law in force in 1954 was the old Patent Ordinance, 1904, which, on the consolidation
of the statute law, became Chap. 222 in the 1939 Revised Edition. Sec. 5 of that Act read:

   '5. (1) Every person who is the true and first inventor, or the legal representative of a true and first
inventor, of an invention, may obtain either alone or jointly with one or more person or persons the
exclusive right and privilege to make, use, exercise, and sell the same within the  D Colony for his
own benefit in such manner and for such period and under such conditions as are hereinafter in this
Act prescribed.

   (2) This right and privilege shall be granted by letters patent to be issued by the Governor in the
manner hereinafter prescribed.'

The sole issue in this case is whether the 'communicatee' of an  E invention may be regarded in law
as 'the true and first inventor' of the invention, within the meaning of sec. 5.

The solution of this complex problem involves a detailed study of the history of patent legislation in
the territory.

The origin of the patent legislation of this territory and, indeed, the origin of patent legislation in the
entire Western world, is the English  F Statute of Monopolies, 1623 (21 Jac. 1, chap. 3). (See Fletcher
Moulton on Patents, 1913 ed., p. 1). Sec. 6 of this statute reads as follows:
   'Provided also . . . that any declaration, before mentioned, shall not extend to any letters patent
and grants of privilege for the term of 14 years or under, hereafter to be made, of the sole working
or making of any manner of new manufactures within this Realm, to the true and first inventor and
inventors of such manufactures, which others at the time of making such letters patent and grants
shall not use, so as also they be  G not contrary to the law, nor mischievous to the State, by raising
prices of commodities at home, or hurt of trade or generally inconvenient. The said 14 years to be
accounted from the date of the first letters patent or grants of such privilege hereafter to be made,
but that the same shall be of such force as they should be, if this Act had never been made, and of
none other.'

This section still forms the basis of English patent law. (See Halsbury,  H Statutes, 2nd ed., vol. 17, p.
613). With the development of patent law in England, the words 'true and first inventor' came to
acquire a highly specialised meaning - a meaning peculiar to patent law and not consistent with the
popular meaning of these words. The technical and specialised meaning of these words in patent
law has come to include not only the actual inventor himself but also the 'importer' (which includes
a 'communicatee') of the invention, and, indeed, in England it would appear that a common method
of registering a foreign patent is for the foreign inventor to have the patent registered first in the
name

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of his local patent agent, as the 'communicatee' of the invention, and then, subsequently, for the
patent agent to assign the patent to him, much as was done in the instant case.

The specialised meaning of the words 'true and first inventor' is well  A summarised by Lord JESSEL in
Plimpton v Malcolmson, (1876) 3 Ch. D. 531 at p. 555, thus:

   'The Act of Parliament (21 Jac. 1, chap. 3), on which all these patents are founded, tells us this: that
to come within the exception of the Statute of Monopolies, a man who has the patent must be the
first and true inventor, and he must describe something in his specification which is not already
known and used. What is the meaning of a first and true inventor? To ascertain its meaning, you
must have recourse, no doubt, to  B various decisions given on the statute, which is very nearly 300
years old. It is not for a Judge of the present day to give his meaning as to what should be attributed
to the words of the statute. He must take the construction put on the statute to be of the same
effect, as guiding him to a correct decision, as if that construction had been enacted as part of the
statute.

   In order that those who may have to consider my judgment hereafter may know the view that I
take of the statute combined with decisions, I will  C state the result at which I have arrived. As I
understand, shortly after the passing of the statute, the question arose whether a man could be
called a first and true inventor who, in the popular sense, had never invented anything, but who,
having learned abroad (that is, out of the realm, in a foreign country, because it has been decided
that Scotland is within the realm for this purpose) that somebody else had invented something,
quietly copied the invention, and brought it over to this country, and then took out a patent. As I
said before, in the popular  D sense he had invented nothing. But it was decided, and now,
therefore, is the legal sense and meaning of the statute, that he was a first and true inventor within
the statute . . .'

Terrell and Shelley on Patents, 9th ed., p. 22, put it thus:

   'There is no doubt, therefore, that the words 'true and first inventor' in the Statute of Monopolies
were intended to include both -

   (1)   true and first inventors (in the modern popular sense), and

   (2)   true and first importers into the realm.'

  E It is unnecessary to go into the history of how the words came to acquire this specialised
meaning; it suffices to say that this meaning has, for 300 years, been recognised by the English
Courts and is not dependent on any legal principle whatsoever. It is not dependent, for example, on
any principle peculiar to English statute or common law. So  F much appears clearly from the case of
Marsden v The Saville Street Foundry and Engineering Co. Ltd., (1878) 3 Ex. D. 203, in which case
Lord JESSEL, in a judgment characteristic of him, said (see p. 205):

   'It is difficult to say a priori on what principle a person who did not invent anything, but who
merely imported from abroad into this realm the invention of another, was treated by the Judges as
being the first and true inventor. I have never been able to discover the principle, and  G although I
have often made enquiry of others, and of some who are more familiar with the patent law than
even I am, although I cannot pretend not to possess a considerable familiarity with it, I could never
get a satisfactory answer. The only answer was, it has been so decided, and you are bound by the
decisions. But it is an anomaly as far as I know, not depending on any principle whatever. It has
never been declared by any Judge or authority that there is such a principle, and, not being able to
find one, all I can say is, that I must look upon it as a sort of anomalous decision which has acquired
by time and recognition the  H force of law.'

Such differences as may exist between English and Roman-Dutch law can, therefore, have no bearing
on the problem.

The words 'true and first inventor' have thus, in the passage of time, become terms of art in English
patent law, with this specialised meaning. English patent law, as has already been pointed out, is the
origin of our patent law. In the parlance of patent law, therefore, these words have now acquired a
meaning different from their popular meaning.

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It has been argued that to give these words the meaning given to them in patent law is to put a gloss
on their grammatical meaning. This, however, does not appear to me to be so. Where words in a
particular trade or usage have acquired a technical meaning, it is no more  A ungrammatical to give
them that meaning when used in that particular trade or usage than it is to give them their popular
meaning when they are used in a popular sense. In the old parlance of bakers, a 'dozen' meant
'thirteen' and, in that parlance, it was no more ungrammatical to give the word the meaning of
'thirteen' than it was to give the word the meaning of 'twelve' when it was used in its popular sense.

  B It is trite law that

   'the first and most elementary rule of construction is that it is to be assumed that the words and
phrases of technical legislation are used in their technical meaning if they have acquired one, and,
otherwise, in their ordinary meaning'.

(Maxwell on Interpretation of Statutes, 10th ed., p. 3, and cases there cited).

  C When, in a technical statute like a patent statute, the Legislature uses words which for some 300
years have been recognised as having a specialised technical meaning, it must be assumed that the
Legislature intended to used the words in their recognised technical sense and not in their popular
sense, unless, of course, it appears from the context  D in which the words are used that the
Legislature intended to depart from the proper technical meaning.

It is of some significance here that where it appears clearly from the wording of a particular patent
statute that a 'communicatee' is not entitled to have a patent registered in his name, that statute,
when  E dealing wih the persons who may be granted patents, does not employ the words 'true and
first inventor' at all. See, for example, such Acts as the Canadian Patent Act of 1869 (32-33 Vict.,
chap. 11). Sec. 6 of that Act, in place of the words 'true and first inventor', uses the words 'any
person . . . having invented and discovered any new and useful art . . .'; the Federal Patents Act, 13
of 1957, which (see sec. 11),  F instead of the words 'true and first inventor', uses the words 'a
person claiming to be the inventor of the invention'; the South African Patents, Designs, Trade Marks
and Copyright Act, 1916, which (see sec. 14) simply uses the words 'the inventor'. In striking contrast
to these Acts is the English Patent Act, 1949. That Act preserves the right of a  G 'communicatee' to
have a patent registered in his name but nowhere in the Act itself is this right given to a
'communicatee' more explicitly than by the use of the words (see sec. 1) 'any person claiming to be
the true and first inventor of the invention'. Thus, a comparison of the Canadian, Federal and South
African Acts on the one hand, with the  H English Act on the other, highlights the technical meaning
which the words 'true and first inventor' have acquired in patent law.

It seems to me, therefore, that prima facie the words 'true and first inventor' in patent legislation
include a 'communicatee'. It follows that cases dealing with other patent statutes which do not
contain the words 'true and first inventor' are of no help in determining the meaning to be given to
these words in the Rhodesian statute.

Mr. Suzman has argued that the meaning of sec. 5 (1) of Chap. 222 is clear and unambiguous and,
this being so, the Court need not rely on any aids to interpretation in order to arrive at the sub-
section's true

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meaning. If this sub-section were to be interpreted in vacuo, as it were, then I would agree that its
meaning is clear and unambiguous, but bearing in mind that the sub-section occurs in a patent Act,
that meaning is not the meaning contended for by Mr. Suzman but that contended for by the
plaintiff. It is trite law, however, that a statute  A must be read as a whole and, when this is done, it
appears, as I shall show later, that this measure provides what I would regard as a classic example of
statutory ambiguity.

The first patent legislation in force in the territory was the old Cape  B Act, 17 of 1860. This Act,
though it by no means followed the form of the English Patent Act then in force (the Patent Law
Amendment Act, 1852 (15-16 Vict., chap. 83)), defined an 'invention', inter alia, thus:

   '1. In the interpretation of this Act the term 'invention' shall bear and have the same meaning as
the term 'invention' bears and has in the Act of the Imperial Parliament, the fifteenth and sixteenth
of Her Majesty, Chap. 83 . . .'

The Imperial Act quoted, defined 'invention' thus:

  C    'The expression 'invention' shall mean any manner of new manufacture the subject of letters
patent and grant of privilege within the meaning of the Act. 21 Jac. 1, chap. 3.'

It is clear, therefore, that the word 'invention' had the same meaning in the old Cape Act as it had in
the old English patent law. Sec. 2 of the old Cape Act read:

  D    '2. It shall be lawful to make and issue, in the manner hereinafter mentioned, letters patent
granting to the true and first inventor of any invention the privilege of the sole and exclusive
working, making, and enjoyment of such ivention, within this Colony, for any term not exceeding 14
years from the date of such letters patent.'

There is nothing in the context in which the words 'true and first  E inventor' were used in the old
Cape Act which indicates that the words were not intended to be used in their proper technical
sense; in fact, from the adoption of the English definition of 'invention', there is the clearest
indication that the Legislature did intend to give these words their correct technical meaning. Such
authority as there is on this Act also supports the view that the words did include a 'communicatee'.
(See the case of Kemp v Uppleby & Co., (1865) 5 Searle 86).

  F The old Cape Act remained our patent law until 1904 when it was replaced by our Patents
Ordinance, 1904, and, up to this stage, the law was clear enough. The words 'true and first inventor'
included a 'communicatee'.

  G It is necessary here to refer to the Transvaal Patents Proclamation, Proc. 22 of 1902, as this
Proclamation undoubtedly influenced the drafting of the 1904 Ordinance. Sec. 5 of this Proclamation
reads:

   '5. Every person who is the true and first inventor or the legal representative of a true and first
inventor of an invention as hereinafter defined may obtain either alone or jointly with one or more
person or persons the exclusive right and privilege to make use exercise  H and sell the same within
this Colony for his own benefit in such manner and for such period and under such conditions as are
hereinafter prescribed.

   This right and privilege (hereinafter referred to as a patent) shall be granted by letters patent to be
issued by the Commissioner in manner hereinafter prescribed.

   . . . (save as provided by secs 23 and 53 respectively of this Proclamation) and not patented or
described in any printed publication in this Colony or any foreign country before the application for a
patent in respect of the same and not in public use or on sale in this Colony or any foreign country
for more than two years prior to such application unless the same is proved to have been
abandoned.'

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It is at this stage that the law becomes unclear because it will be seen that, while the Transvaal
Proclamation adhered to the use of the words 'true and first inventor', it departed from the English
definition of  A 'invention' and substituted a new definition which, to say the least, throws the law
into a state of confusion as this definition is incompatible with the correct technical meaning of the
words 'true and first inventor'.
Though there are some differences, there is little doubt that much of the Rhodesian Patents
Ordinance, 1904, was copied from the Transvaal  B Proclamation. For example, sec. 5 (1) of Chap.
222 is in identical terms to the first paragraph of sec. 5 of the Transvaal Proclamation.

Sec. 2 of Chapter 222 defines 'invention' thus:

   ''invention', save as provided by secs. 23 and 53 respectively of this Act, means any new and useful
art, process, machine, manufacture, or composition of matter, or any new or useful improvement
thereof capable of being used or applied in trade or industry and not known or used by others; and
not -

  C    (a)   either patented in the Colony or any foreign country before the application for a patent in
respect to the same; or

   (b)   in public use or on sale in the Colony or in any foreign country for more than two years prior to
such application, unless the same is proved to have been abandoned';

While there are some differences between this definition and the Transvaal definition, it is quite
clear that the Rhodesian definition is  D modelled on the Transvaal one. Decisions on the Transvaal
Proclamation of 1902 would be of great value in interpreting Chap. 222 but unfortunately there
appears to be none in point.

The crisp issue is whether the words 'true and first inventor' in Chap.  E 222 are to be given their
proper technical meaning, or whether it can be assumed from the wording of the definition of
'invention' that the Legislature intended to use these technical words not in their technical sense but
in their popular sense.

This is the sort of problem with which Courts are continually faced when  F asked to interpret a
statute which has been clumsily drafted - a statute in which the draftsman clearly has not
appreciated that he has used language in one section which can hardly be reconciled with the
language he has used in another.

Two forceful opposing arguments can be advanced here, between which it is not easy to decide.

  G The plaintiff says that wherever possible a statute should be construed so as to give the language
used its correct meaning. The correct meaning of the words 'true and first inventor', in patent law,
includes a 'communicatee'. These words can be given their correct meaning if they are not read as
being interdependent on the definition of the word 'invention'. It is argued that this definition is
intended to define  H only what may be patented and not to limit the rights of those who are
entitled to be granted letters patent in respect of that invention. If the Act is construed this way, the
words 'true and first inventor' in sec. 5 (1) can be given their correct meaning and can be reconciled
with the definition of 'invention' in sec. 2. This is, therefore, the way the plaintiff says the Act must
be construed.

The defendant, on the other hand, argues (and this, broadly, is the argument which commended
itself to the Judge in the Court a quo) that the Legislature must have intended the words 'inventor'
and 'invention'

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to be interdependent on each other. In this case, the words 'true and first inventor' cannot be given
their technical meaning because to give them that meaning would bring them into direct conflict
with the definition of 'invention', since it is clear from the wording of that  A definition, and,
particularly, from the words 'not known or used by others' that it cannot possibly include a
'communicatee'. It is argued that this conflict can only be resolved by interpreting the words 'true
and first inventor' in their popular and not their technical sense and, interpreted in this sense, they
do not include a 'communicatee' but only the actual inventor of the invention.

It is difficult to decide between these two arguments as they are so  B nicely balanced, but, if the
plaintiff's argument is adopted, it is just possible to give all the words in the measure their proper
meaning whereas, if the defendant's argument is adopted, it is necessary to do violence to the
proper meaning of the words 'true and first inventor'.  C With respect to the view taken by the
learned Judge in the Court a quo, therefore, I prefer the argument of the plaintiff to that of the
defendant.

To give the words in sec. 5 (1) their correct meaning, the section must be interpreted as if it read:

   'Every person who is an inventor or the communicatee of an invention may obtain . . .'

  D The provisions of sec. 5 which govern who may apply for the grant of a patent and the definition
in sec. 2 of an 'invention' are certainly interdependent. This necessarily follows from the fact that an
applicant, whether the actual inventor or a communicatee, must satisfy the Registrar that the
subject matter of his application is an 'invention' within the meaning of the definition. To do this,
the  E applicant must satisfy the Registrar, inter alia, that the invention is 'not known or used by
others'. There can be no doubt that these words, as the learned trial Judge found,

   'refer to the time of the invention of the 'new and useful art, process, etc., etc.' by the inventor
thereof'.

By necessary implication, the persons who are not excluded from successfully applying for
registration by the use of the word 'others'  F in the words 'not known or used by others' are those
who, by the use of the term of art 'true and first inventor', in sec. 5 (1), are expressly given the right
to apply, i.e., the actual inventor and a communicatee.

It is possible, as Mr. O'Donovan submits, that the practical effect of  G the definition of an invention
is to restrict the right to apply for registration as a 'communicatee' to persons who have received
their communication of an invention from the actual inventor. On the other hand, it is possible that
a communicatee, in making an application, stands in every respect in the same position as an actual
inventor and  H is obliged to prove no more and no less than the actual inventor making an
application in respect of the same invention would be obliged to prove.

Once it is accepted that the words 'known or used by others' relate to the time of invention, it
becomes clear that they only serve to emphasise what is meant by the word 'new' where it qualifies
'useful art, process, machine, etc.' It is possible, as the learned trial Judge held, that the words imply
that the alleged invention 'must be new all over the world' and that in this respect the Rhodesian
law differs from the

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provisions of sec. 6 of the English Statute of Monopolies, 1623, which provides that the invention
need only be a new manufacture 'within this Realm'.
  A This appeal, however, is only concerned with the right of a communicatee to apply for the grant
of a patent and not with the evidence he must produce in support of an application. The nature of
this evidence which turns on the precise meaning of the definition in sec. 2 is not a matter which
falls for decision under the exception taken by the plaintiff. It is sufficient to hold, as I do, that sec. 5
(1) of Chap. 222 does  B include a 'communicatee'. This being so, the appeal must be allowed with
costs and the order of the Court a quo altered to read:

   'The exception to para. 3 (a) of the defendant's main plea as read with para. 1 (i) of the further
particulars thereto is allowed with costs.'

Some argument was addressed to us on the effect upon Chap. 222 of the  C Patents, Copyright and
Trade Marks (Emergency) Act of 1941, and, in particular, secs. 2 and 6 of that Act. In view of the
decision to which I have come and the fact that this Act was not referred to in the Court a quo, I do
not consider it necessary to consider the point.

MACDONALD, J.P., and JARVIS, A.J.A., concurred.

  D Appellant's Attorneys: Coghlan, Welsh and Guest. Respondent's Attorneys: Honey and
Blanckenberg.

 E