MyPatent.co.za

(Extract from MyPatent’s Patent e-Book)

To reduce wear on shoes, various patents were filed prior to the 1960’s for heels having metal plates. Drummond-Hay worked in the mines and noticed that miners’ boots tendered to slip in the wet environment of stopes. To remedy this, Drummond-Hay created a boot with an integrally moulded metal plate that semi-protruded from the heel and filed South African patent No. 22967 entitled “Improvements in heels for miners’ boots”.

Drummon-Hay’s boot was subsequently copied by DI Fram Company Limited resulting in infringement being instituted. DI Fram countered this action by claiming that Drummond-Hay’s boots were not novel. In his defence, Drummond-Hay argued that: (i) his configuration, although not necessarily new, prevented slippage in addition to reducing wear; and (ii) related specifically to a miner’s boot. The prior patents, which related to footwear in general, did not describe this additional benefit in their descriptions.

The court held that it was obvious that the heels described in the prior patents would have prevented slippage, and the fact that the descriptions did not mention this benefit was immaterial.

A new use for an existing product is therefore not patentable. But this principle does not necessarily apply to pharmaceuticals.