Jurisdiction Reports

South Africa: Jurisdictional developments

Adams-and-adams

The country has seen a number of firsts in its courts as patent law there develops. Danie Dohmen, Alexis Apostolidis and Russell Bagnall from South African law firm Adams & Adams summarize the key cases from 2012.

During 2012 there were a number of judgments from the South African courts which developed patent law in the country. The most significant one being the judgment given by the South African Supreme Court of Appeal (SCA) in a successful appeal by the French Sanofi-Aventis group in enforcing a formulation patent for the oncology drug, Taxotere®, against the South African Cipla Group (the local distributor of Cipla India’s products).

Preliminary injunction

For the first time, the SCA considered an interim interdict (preliminary injunction) application in a patent infringement matter and accepted the balanced enquiry (comparing the strength of the patentee’s rights – validity of the patent and infringement – against the balance of convenience between the parties, as well as the considerations of whether there is a well-grounded apprehension of irreparable harm and no other satisfactory remedy) which has been developed over the years by the lower courts. The SCA further ruled that regardless of whether the wrong of contributory infringement is founded in statute or in common law it exists in patent law and is actionable.

Amicus intervention

In an interesting (and unexpected) turn of events the Treatment Action Campaign (TAC) intervened in the appeal as an amicus of the court. The TAC raised a concern relating to the possibility of a preliminary injunction being granted to prevent the supply of a lifesaving drug. It founded one of its objections on the Constitution of South Africa, which guarantees everyone the right to have access to health care services, as in the TAC’s view this includes a right to have access to affordable medicines.

The SCA noted that there was no Constitutional challenge to the validity of the Patents Act per se and, on the assumption that the patent is not invalid for want of an inventive step, the SCA did not consider that the Constitution came into play to the extent that Sanofi’s rights to enforce the patent should be denied. The TAC further advanced the argument that the issue of the broader public interest must be taken into consideration, not only the interest of the litigating parties, when considering whether or not to grant a preliminary injunction.

The SCA had regard to a number of foreign judgments, including the well-known case of eBay Inc. v Merck Exchange LLC, and Sanofi accepted that the public interest factors (including that it is in the public interest to enforce valid patent rights) should play a role in establishing where the balance of convenience lies when determining the grant or refusal of a preliminary injunction.

The result

On the facts of this case, Sanofi was able to demonstrate successfully that the product accessibility (and public interest) would remain largely unaffected by the removal of the generic product from the market. It demonstrated this with reference to pricing in the public and private sector and product substitutability.

The SCA further held that to refuse an injunction only to frustrate the patentee’s lawful monopoly would be an abuse of the discretionary powers of a court. It also remarked that denying the public access to a generic medicine during the lifetime of a patent is the ordinary consequence of patent protection and it applies as much in all cases. A subsequent attempt by the Cipla Group to appeal against the SCA judgment to the Constitutional Court of South Africa was refused. In future, when enforcing patents relating to important (and perhaps lifesaving) drugs, it will be necessary to demonstrate that the public interest would not be disserved by the court preventing the supply of the generic alternative.

Unpatentable subject matter

A further interesting development occurred in the matter of
3MFuture Africa v The Standard Bank of South Africa and others. For the first time in South Africa the question came before the patents court of whether claims directed towards a method of authorizing a transaction comprised a scheme, rule or method of doing business and thus relate to unpatentable subject matter. Although it was held that the method claims are new, inventive and infringed, the court failed to directly address the question of whether or not the method claims comprise unpatentable subject matter. It is expected that this aspect will form the subject of a possible future appeal.

Extended time periods

In the matter of the University of Pretoria v Bone S.A. and others the patents court considered an appeal brought by the University of Pretoria against a decision of the Registrar of Patents to allow (i) an extension of time for acceptance of a patent application beyond the stipulated deadline in circumstances in which the request for the extension was made after the relevant time period had already expired and (ii) to condone the publication of acceptance of the grant of a patent out of time, and absent an application for extension, as an “office practice” and to avoid “unnecessary hardship”.

The court interpreted the language of the relevant statutory provisions as being peremptory and also took the view that the relevant statutory provisions which allow the Registrar to extend time periods did not assist Bone SA. Thus, any application in which a delay of acceptance was requested after expiry of the acceptance deadline (when the applicant had not yet placed the application in order for acceptance) had lapsed and is not be capable of being resurrected.

Similarly, if publication of acceptance had not taken place within the required three month period, absent any extension, the same would apply. There are strong views in the profession that the provisions were incorrectly interpreted by the court and further developments on a possible appeal or other cases in this regard are expected in the near future.

Contributory infringement

In the matter of Dynamic Fluid Control v LW Tank Systems the court reaffirmed that for there to be a finding of contributory infringement it would be necessary for there to be direct infringement of the patent. 2012 has been an interesting year in the development of patent law jurisprudence and future development of the public interest factor in preliminary injunctions and contributory infringement are awaited in years to come.

Résumés

Danie Dohmen

Danie is a partner at Adams & Adams and specialises in patent and design litigation and opinion work. Mr Dohmen obtained a BSc in physics and chemistry in 1993 and an LLB in 1996 from the Randse Afrikaanse University. He was admitted as an attorney of the South African High Court in 1998, as a patent attorney in 2002 and as a notary public in 2004. Mr Dohmen represents multinational and national clients, and although his primary focus is in the pharmaceutical field, he acts on behalf of clients in a diversity of fields.

Alexis Apostolidis

Alexis is a Partner Adams & Adams. He holds a BSc in chemistry and law and a bachelor of laws, cum laude, from the University of the Witwatersrand. He is an attorney of the High Court of South Africa as well as a patent attorney and also holds a P. Diploma in EU Competition Law (with merit) from King’s College, London. Mr Apostolidis is well experienced in all aspects of patent law. Furthermore, he heads the competition law group of Adams & Adams and is the leading specialist in South Africa and Africa when it comes to the interface between competition law and intellectual property.

Russell Bagnall

Russell has been a partner at Adams & Adams since 1998. He specialises in patent litigation and opinion work, mainly in the field of pharmaceuticals and chemistry. Mr Bagnall obtained a BSc [Eng] (chemical, metallurgical and material science) from the University of Witwatersrand in 1989 and a BProc degree from the University of South Africa in 1996. He was admitted as an attorney of the South African High Court in 1996 and as a patent attorney in 1998. Mr Bagnall has advised clients on several contentious issues involving pharmaceutical disputes between multinational and generic companies.