Of public interest?

The Supreme Court in South Africa has confirmed the balance to be taken between public interest and preliminary injunctions based on patent infringement, as Danie Dohmen explains.

Should “public interest” influence the grant of a preliminary injunction based on patent infringement? This is the question which the South African Supreme Court of Appeal (SCA) had to consider in 2012 during an appeal brought by the French Sanofi-Aventis group against the South African Cipla Group (the local distributor of Cipla India’s products).

The successful appeal for the grant of an interim interdict (preliminary injunction) was brought by Sanofi in enforcing a formulation patent for the oncology drug, Taxotere®. The Treatment Action Campaign (TAC) intervened in the appeal as an amicus of the court and raised a concern relating to the possibility of a preliminary injunction being granted to prevent the supply of a life saving drug.

It was the first time that the SCA had considered a preliminary injunction application in a patent infringement matter and in its judgment the SCA accepted the balanced enquiry for preliminary injunctions (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 had over the years been developed by the South African lower courts.

TAC’s intervention

The TAC founded one of its objections to the grant of the preliminary injunction on the Constitution of South Africa, which guarantees to everyone the right to have access to health care services. In the TAC’s view, this should include 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 ground that the issue of the broader public interest must be taken into consideration, not only the interest of the litigating parties, as one of the factors 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 as part of the factors in establishing where the balance of convenience lies when determining the grant or refusal of a preliminary injunction.

Public interest outcome

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 (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. The SCA 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.

This judgment is set to influence future enforcement of patents in South Africa and has provided valuable guidance on how preliminary injunction applications in patent enforcement matters must be treated.

Adams & Adams represented Sanofi in the matter.

Résumé

Danie Dohmen, Partner: Patent Litigation Section, Adams & Adams

Danie Dohmen is a partner at Adams & Adams and specialises in patent and design litigation and opinion work. Mr Dohmen has been ranked in tier 1 for patent litigation in South Africa in IAM 250 – The World’s Leading Patent Litigators 2011.

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, including agriculture, mining, manufacturing, transport and safety. Mr Dohmen further acts in multi-jurisdictional patent and design litigation in several African countries. During 2011 Mr Dohmen represented a successful patentee before the South African Supreme Court of Appeal in a precedent-setting patent obviousness dispute. He also recently represented a patentee in a successful preliminary injunction application relating to a top-selling pharmaceutical product.

Mr Dohmen is a member of the Licensing Executives Society and the International Federation of Intellectual Property Attorneys, and a foreign member of the American Intellectual Property Law Association. He is also a fellow of the South African Institute of Intellectual Property Law, where he sits on its Patent Law Committee.

Contact Details:

Tel:                         +27 (0) 12 432 6201

Fax:                       +27 (0)12 432 6582

Email:                    danie.dohmen@adamsadams.com

Website:              www.adamsadams.com