South Africa’s patent litigation landscape well tended in 2012

The following is a summary collection of pertinent cases that have shaped the patent litigation landscape in South Africa in 2012. These cases not only serve to highlight well-engrained patent law principles, but also serve to steer South Africa’s patent practice into the future. It is noteworthy that South African courts continue to uphold the rights of patent holders. In this review, we represented the successful party in three cases.

Over the last year, we witnessed the emergence of constitutional considerations in patent litigation. In Cipla Medpro v Aventis Pharma, the Supreme Court of Appeal (SCA) was confronted with a public interest defence, together with the more common defences usually raised in such matters, against the granting of an interim interdict in favour of Aventis to prevent Cipla from infringing its patent. This matter represents the first instance where constitutional considerations were raised in patent litigation.

The judgment pertains to two appeals heard concurrently by the SCA, the first being an appeal by Cipla against an amendment of the patent that was made by Aventis, and the second being an appeal by Aventis against the order of the Court of the Commissioner of Patents dismissing its application for an interim interdict against Cipla. Cipla’s application for setting aside the amendment of the patent was based firstly on claim language interpretation, and secondly on various grounds of invalidity. Regarding Aventis’ application for an interdict, the Commissioner of Patents found that the first claim of the patent was unclear and thus invalid, and accordingly refused to grant the interdict.

The SCA overturned this decision, found that the other grounds for alleged invalidity raised by Cipla were unsubstantiated, and consequently held that Aventis had prima facie established an entitlement to enforce its patent. The Treatment Action Campaign (TAC), a South African AIDS activist organisation, successfully applied to be admitted as amicus curiae in the SCA matter to assist the court with certain constitutional considerations. Although the TAC managed to convince the court that the public interest should be considered in such matters, they were unsuccessful in convincing the court that the perceived public interest outweighed the patentee’s rights to enforce its patent.

Cipla withdrew its product from the market following the SCA judgment, but only for a short period until an application for leave to appeal to the Constitutional Court was filed. Aventis therefore approached the High Court as a matter of urgency for a declaratory order that the application for leave to appeal to the Constitutional Court did not suspend the SCA judgment, and that Cipla was not entitled to relaunch its product during this time. The High Court dismissed Aventis’ application, but shortly after the High Court judgment, the Constitutional Court refused Cipla’s application for leave to appeal, and the SCA judgment in favour of Aventis was thus confirmed.

The importance of the correct and timely execution of procedural steps in patent litigation came to the fore in the case of BASF Agro BV Arnhem (NL)-Wadenswil Branch v Villa Crop Protection and Laeveld Agrochem. The defendant failed to carry out certain procedural steps on a timely manner, with the result that the matter of alleged infringement of the plaintiff’s patent was not ready for hearing before the court. Accordingly, the court was not able to deal with the merits of the case. While the main matter is still due to come to trial, this judgment, which is interlocutory to the main matter, relates to the issue of costs occasioned by the postponement of the hearing of the main matter.

In his decision regarding the issue of costs, the judge commented on both the plaintiff’s and the defendant’s conduct. In particular, it was held that it must have been evident to the plaintiff that there was a high likelihood that the main matter was not ready to proceed to trial. Notwithstanding this fact, the plaintiff chose to continue as if the trial would proceed. The court also concluded that the defendants wilfully delayed the launching of their applications to amend their plea and to incorporate a counterclaim in their revocation proceedings, and to postpone the main matter to a time when the commencement of the trial would be affected by the possibility of unnecessary costs, without satisfactorily accounting for the delay. The court arrived at the conclusion that while both parties were to blame, more of the blame for the postponement of the main matter rested with the defendants. The court ordered the defendants to pay 50% of the plaintiff’s wasted costs, as taxed, and as occasioned by the postponement.

The case of Videx Wire Products v Camworth Technologies related to a declaration of non-infringement of the respondent’s patent. Videx instituted proceedings against Camworth Technologies under section 69(1) of the Patents Act. The patent in suit relates to a device referred to as a pre-stress unit, or a pot. Videx intended to manufacture and distribute a pre-stress unit in South Africa. The dispute under question was whether the Videx unit, if manufactured and sold by Videx, would infringe Camworth Technologies’ patent. Prior to this action, Videx complied with the requirements of section 69(1)(a), but Camworth Technologies refused to give the required acknowledgment. It was held that the Videx unit did not infringe claim 1 of the patent as the socket of the Videx unit was not convexly curved. This judgment is under appeal.

In the matter of University of Pretoria v The Registrar of Patents, Bone SA and Nicolaas Duneas, the Commissioner of Patents was tasked to adjudicate in an appeal against a decision of the Registrar of Patents, pertaining to entries in the patent register made in relation to two South African patents.

The case dealt with section 40 of the act, relating to the acceptance of a patent application by the registrar prior to publication. It was held that the applications had in fact lapsed because their acceptance had not been properly delayed.

In the case of African Explosives v Sasol Dyno Nobel, the applicant applied, under section 51(10) of the Patents Act, to set aside two amendments to the claims of the respondent’s patent. In respect of the first amendment, the applicant contested that the substitution of the words “surface connection” with “surface connector block” served to broaden the scope of the first claim, thereby contravening the provisions of section 51(7).

The court held that on a plain, grammatical reading, the word “connection” could not be interpreted to mean a state of connection and held that the amendment was allowable. A second amendment was also allowed and the application was dismissed with costs.