Published in Patent Litigation Jurisdictional Comparisons, European Lawyer REFERENCE series, Ed. Thierry Calame and Massimo Sterpi, 2006
Hahn & Hahn Inc. Dr Hans H Hahn and Janusz F Luterek
1. SOURCES OF LAW
1.1 What are the principal sources of law and regulation relating to patents and patent litigation?
The South African Patents Act of 1978 as amended from time to time (Patents Amendment Act 14 of 1979, Patents Amendment Act 67 of 1983, Patents Amendment Act 44 of 1986, Patents Amendment Act 76 of 1988, General Law Amendment Act 49 of 1996, Intellectual Property Laws Amendment Act 38 of 1997, and Patents Amendment Act 58 of 2002) and the patent regulations under such Act governs all matters relating to patent and patent litigation. Procedural matters in litigation not dealt with by the patent regulations are determined under the regulations of the High Court.
The interpretation of the Patents Act follows common law principals of Roman Dutch law, going back to early Roman legal doctrines as applied by early Dutch authorities.
South Africa has acceded to the following international treaties and conventions relating to patents: Paris Convention, PCT, TRIPS, WTO.
1.2 What is the order of priority of the relevant sources, i.e. which take precedence in the event of a conflict?
In the event of a conflict between national patent law and the Constitution of the Republic of South Africa, the Constitution prevails: 108 of 1996, as interpreted from time to time by the South African Constitutional Court. South African statutes take precedence over any conflicting provisions in international treaties or international law not expressly incorporated in South African statutes. However, South African courts are bound by past decisions of higher ranking South African courts.
2. COURT SYSTEM
2.1 In which courts are patents enforced? Are there specialised courts? If not, what level of expertise can a patent holder expect from the courts?
By statute the Registrar of Patents has some judicial powers, which in practice are mainly confined to administrative matters (including oppositions against administrative acts) and to tax costs awarded by the Commissioner of Patents. Decisions by the Registrar are subject to review by, or appeal to the Commissioner of Patents.
According to the Patents Act, the Court of the Commissioner of Patents is the only court having jurisdiction in the first instance in patent litigation. It has the status of a division of the High Court. The Judge President of the Transvaal Provincial Division of the High Court designates a judge or acting judge of that division to act as Commissioner of Patents in any particular case. Usually a judge is so designated who has had some experience in patent matters. In rare instances such a judge, who academically will always be a full-fledged lawyer, may also have some technical qualifications. The Commissioner can of his own volition, or at the request of a litigant, appoint an assessor to assist him in difficult (e.g. specialized technical) matters to be decided by him.
An appeal lies from the Commissioner of Patents to a court of two or three judges of the Transvaal Provincial Division of the High Court or directly to the Supreme Court of Appeal (which sits in Bloemfontein).
2.2 To what extend are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
South African courts are bound by the decisions of other national courts of the same or higher level. Decisions of foreign courts only have persuasive effect and only become binding when adopted with approval by a national court.
The South African courts will look carefully at possible differences between underlying foreign laws and South African laws, before adopting a foreign decision.
2.3 Do the courts deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (e.g. the Patent Office)?
The Court of the Commissioner of Patents deals with infringement as well as invalidity. Where appropriate, it will do so simultaneously in the same proceedings.
2.4 Who can represent parties before the courts handling patent litigation and/or government agency dealing with patent validity issues?
Any party can be represented in any legal proceedings before the Registrar or the Commissioner of Patents by a registered patent agent, a patent attorney or an attorney admitted to practice in the High Court or an advocate (counsel). In any appeal to a court higher than the Court of the Commissioner of Patents, the right of appearance is reserved for patent attorneys, attorneys admitted to practice before the High Court and advocates.
2.5 What is the language of the proceedings? Is there a choice of languages?
Theoretically, the proceedings can be in any of the eleven official South African languages: Sepedi, Sesotho, Sitswani, siSwati, Tshivenda, Xitzonga, Afrikaans, English, isiNdelbele, isiXhoza and isiZulu. However, in practice, court proceedings in patent matters are almost exclusively in English.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
It is highly improbable that a South African court would grant any cross-border or extraterritorial injunctions, except in a situation where acts committed abroad would result in an infringement within South African borders. Offering to dispose of (e.g. an offer to sell) to the South African public constitutes an act of infringement in South African law. This could apply to advertisements in publications distributed in South Africa or via the internet. Conceivably such situations could lead to an interdict, provided jurisdiction can be established against the defendant in South Africa, e.g. by an arrest of the defendant or the attachment of some material or immaterial property of the defendant in South Africa.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
It is extremely unlikely that South African court would recognize any blocking effect of what has become known as ‘torpedo’ actions in some foreign jurisdictions.
3. SUBSTANTIVE LAW
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
According to section 45, the patent serves to grant to the patentee in the Republic of South Africa the right to exclude others from making, using, exercising, disposing or offering to dispose of or importing the invention.
Section 69A limits these rights by stating that it shall not be an act of infringement to perform the aforesaid acts ‘on a non-commercial scale and solely for the purpose reasonably related to the obtaining, development and submission of information required under any law that regulates the manufacture, production, distribution, use or sale of any product’. This would apply, for example, to proceedings for the registration of pharmaceuticals, agricultural chemicals of GM products.
The position on the doctrine of equivalents is not entirely clear and there have been no decisions in the Supreme Court of Appeals which would conclusively either require courts to apply the doctrine of equivalents or not to, however, the Court of the Commissioner of Patents (a court of first instance in patent matters) has, for example, found that a two-part cam system infringed a patent claiming a cam system.
3.2 What defences are available to an alleged infringer?
The most common defence against alleged infringement hinges on issues of interpretation of the scope of the claims of the patent and on whether or not the act complained of is covered by that scope.
The second most common defence is based on alleged invalidity of the patent, at least to the extent of the allegedly infringed claim(s). Section 65(4) of the Patents Act 57 of 1978 provides:
‘In any proceedings for infringement the defendant may counterclaim for the revocation of the patent and, by way of defence, rely upon any ground on which a patent may be revoked.’
A defendant can raise invalidity as a defence against alleged infringement without necessarily counterclaiming for the revocation of the patent. In practice, although the so-called ‘Gilette Defence’ in English law is not part of South African law, essentially the same principles can be applied to raising invalidity as a defence in South African infringement proceedings (Netlon Ltd and another v Pacnet (Pty) Ltd 1977 BP87(A).
Defences available but rarely successful include acquiescence, election, waiver and estoppel (of Netlon Ltd ibid.; Plessey South Africa Ltd v Fellowes 1976 BP 566(CP) at 570 B-G; Buchler AG v Chonos Richardson Ltd 1998 RPC 609 (CA); Water Renovations (Pty) Ltd v Gold Fields of SA Ltd 1993 BP 493 (A). Related to these would be a special plea that the plaintiff instituted proceedings notwithstanding an undertaking not to do so (Rollamatic Engineering (Pty) Ltd v Buffelsfontein Gold Mining Co., Ltd and Another 1976 BP 486 (CP).
In special cases a defence of lis pendens or res judicata may be available.
Finally ‘exhaustion of rights’ may be raised in appropriate cases.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
Antitrust proceedings as such are unknown in South Africa in the context of patent enforcement.
However, if inequitable conduct by the patentee is shown in infringement proceedings this can lead to penalties such as refusal of amendments to restore validity and special cost awards.
Section 70(1) of the Patents Act also provides for legal proceedings by any ‘aggrieved person’ to restrain unjustifiable threats under a patent (or event where no patent exists at all). The possible remedies are: (a) a declaration that the threats are unjustifiable; (b) an interdict; (c) damages. In contrast to antitrust proceedings in the USA, South African courts can only award the damages actually sustained. Punitive damages are unknown in South African law.
3.4 On what grounds can a patent be invalidated?
Section 61 states that a patent may be revoked (annulled) only on the following grounds:-
a. that the patentee is not a person entitled under section 27 to apply for the patent;
b. that the grant of the patent is in fraud of the rights of the applicant or of any person under or through whom he claims;
c. that the invention concerned is not patentable under section 25;
d. that the invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to results and advantages set out in the complete specification;
e. that the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of such invention;
f. that the claims of the complete specification concerned are not-
i. clear; or
ii. fairly based on the matter disclosed in the specification;
g. that the prescribed declaration lodged in respect of the application for the patent or the statement lodged in terms of section 30(3A) contains a false statement or representation which is material and which the patentee knew or ought reasonably to have known to be false at the time when the statement or representation was made;
h. that the application for the patent should have been refused in terms of section 36;
i. that the complete specification claims as an invention a microbiological process or a product thereof and that the provisions of section 32(6) have not been complied with.
Regarding subsection (a), according to section 27 only the inventor(s) and/or a person(s) having acquired a right to apply from the inventor can apply for a patent. Such right to apply can be acquired by assignment, legal succession, contract or in any other manner in which such right may be acquired.
The applicant referred to in (b) is the person applying for the revocation.
Regarding subsection ©, section 25 reads as follows:
1. A patent may, subject to the provisions of this section, be granted for any new invention which involves an inventive step and which is capable of being used or applied in trade or industry or agriculture.
2. Anything which consists of:
a. a discovery;
b. a scientific theory;
c. a mathematical method;
d. a literary, dramatic, musical or artistic work or any other aesthetic creation;
e. a scheme, rule or method for performing a mental act, playing a game or doing business;
f. a program for a computer; or
g. the presentation of information, shall not be an invention for the purposes of this Act.
3. The provisions of subsection (2) shall prevent, only to the extent to which a patent or an application for a patent relates to that thing as such, anything from being treated as an invention for the purposes of this Act.
4. A patent shall not be granted-
a. for an invention the publication or exploitation of which would be generally expected to encourage offensive or immoral behaviour; or
b. for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being micro-biological process or the product of such a process.
5. An invention shall be deemed to be new if it does not form part of the state of the art immediately before the priority date of any claim to that invention.
6. The state of the art shall comprises all matter (whether a product, a process, information about either, or anything else) which has been made available to the public (whether in the Republic or elsewhere) by written or oral description, by use or in any other way.
7. The state of the art shall also comprise matter contained in an application, open to public inspection, for a patent, notwithstanding that that application was lodged at the patent office and became open to public inspection on or after the priority date of the relevant invention, if:
a. that matter was contained in that application both as lodged and as open to public inspection; and
b. the priority date of that matter is earlier than that of the invention.
8. An invention used secretly and on a commercial scale within the Republic shall also be deemed to form part of the state of the art for the purposes of subsection (5).
9. In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body, the fact that the substance or composition forms part of the state of the art immediately before the priority date of the invention shall not prevent a patent being granted for the invention if the use of the substance or composition in any such method does not form part of the state of the art at that date.
10. Subject to the provisions of section 39(6), an invention shall be deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms, immediately before the priority date of the invention, part of the statement of the art by virtue only of subsection (6) (and disregarding subsections (7) and (8).
11. An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body shall be deemed not to be capable of being used or applied in trade or industry or agriculture.
12. Subsection (11) shall not prevent a product consisting of a substance or composition being deemed to be capable of being used or applied in trade or industry or agriculture merely because it is invented for use in any such method.
The novelty provisions of section 25 are qualified further by section 26, according to which disclosures made without the consent or knowledge of the patentee (or predecessor in title) do not destroy novelty, nor does working in the Republic by way of reasonable technical trial or experiment by the applicant or patentee (or this predecessor in title).
In the absence of contrary court decisions it is wise to assume that section 25(2)(e) and (f) may well be interpreted by a court quite literally in the light of subsection (3).
As regards subsection (h), section 36 empowers the Registrar to refuse patent applications for inventions which are obviously contrary to well established natural laws; or would encourage offensive or immoral behaviour; or which ‘might be used in any manner contrary to law’.
Section 32(6) referred to in subsection 61(1)(i) requires micro-organisms to be deposited if they are not available to the public and cannot be made or obtained on the basis of the description, if such micro-organisms are necessary for the performance of the invention.
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
Section 68 of the South African Patents Act specifically provides for partially invalid patents. If a finding of partial invalidity is made in a counterclaim for revocation, the court may postpone an order for the revocation of the patent and give the patentee an opportunity to restore validity by amendment.
In ordinary revocation proceedings, section 61(3) explicitly grants to the court a discretion to ‘decide whether the patent shall be revoked or whether and, if so, subject to what amendments, if any, of the specification and claims thereof the patent shall be upheld’.
South African law makes no provision for utility models.
3.6 Is it possible to amend the claims during a law suit?
Amendments (post-grant) can be applied for at any time. If legal proceedings are already pending, the application must be made to the court in which the proceedings are pending and it is customary to publish the intention to make such an amendment in the Patent Journal so that interested third parties may join the case.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (e.g. expiry of time limit)?
Defences available to a defendant in infringement proceedings include prescription, acquiescence, election and other forms of waiver, estoppel, res judicata and exhaustion of rights.
A defendant was successful when it was shown that the plaintiff had sued for infringement in spite of an undertaking not to enter into litigation with the defendant.
The term for prescription in South Africa is three years. It would not be possible to sue for infringement on the basis of an infringement of which the patentee became aware more than three years earlier in the absence of any evidence that the infringement has continued since then or is about to recommence.
As regards exhaustion of rights, lawfully acquiring an article or product originating from the patentee or from a person authorized by the patentee without any conditions normally includes an implied license to use and dispose of the article or product.
3.8 Can a patent holder bring a law suite claiming both paten infringement and unfair competition for the same set of facts?
If the facts support both grounds it is possible to bring law suits under both grounds. Because the Commissioner of Patents is also a judge of the High Court it may be possible to have both types of proceedings consolidated and heard together in the same hearing. This will depend on where the cause of action for the alleged unfair competition has arisen and whether this falls under the jurisdiction of the Transvaal Provincial Division of the High Court.
4. PARTIES TO LITIGATION
4.1 Who can sue for patent infringement (a patent holder, exclusive licensee, non-exclusive licensee, or distributor? Does a licensee need to be registered to sue?
Where a patent has been endorsed ‘licenses o right’ a licensee under a license thus granted (and where the license does not provide otherwise) may institute infringement proceedings, if the patentee fails to do so. In all other cases only the patentee is entitled to sue for infringement.
Where the patentee of record is deceased (or liquidated) the executor(s) of the estate become(s) entitled to sue in their own names(s).
The plaintiff in an infringement action must give notice of the proceedings to any co-patentee and to every license apparent from the register. Such interested parties are entitled to join as co-plaintiffs in order to recover damages.
In the event of an assignment of the patent the assignee becomes entitled to damages accrued prior to the assignment only if the assignment expressly included the right to recover past damages.
By leave of the court the patentee may be substituted even after action has been instituted, provided no prejudice is caused to the defendant.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment for non-infringement?
Under section 69 of the Patents Act any person is entitled to apply for a declaration of non-infringement against the patentee. In such proceedings the validity of any claim of the patent may be put in issue. The applicant must show that he has applied to the patentee in writing for a written acknowledgement to the effect of the declaration claimed, and has furnished the patentee with full particulars of the process or article in question; and that the patentee has failed to give such an acknowledgement.
4.3 Who can be sued for infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Any natural person or legal entity who commits an act of infringement can be sued.
Acts of infringement comprise ‘making, using, exercising, disposing of, offer to dispose of or importing’.
Section 69A specifically permits such acts if committed ‘on a non-commercial scale an solely for the purpose reasonably related to the obtaining, development and submission of information required under any law that regulates the manufacture, production, distribution, use or sale of any product.’ However, subsection (2) prohibits the possession of such product for any other purpose. Building up stock in preparation for future marketing is an infringement.
The question of whether an interdict (injunction in English law) can be obtained against ‘contributory infringement’ has not been positively decided. Under South African common law a person becomes liable ‘even though he has not done the deed himself who has by act or omission in some way or other caused the deed or its consequence: by act, that is by command, consent, harbouring, abetting, advising or instigating’. An interdict should therefore be obtainable under the lex aquilia rather than under the Patents Act as such. This is presently the topic of debate among South African jurists and several matters of this type are pending before the Court so that, in due course, the law on this topic may be settled by legal precedent.
It is submitted that company directors and persons in authority who knowingly permit infringement to be committed can be held liable in their personal capacities for recklessly managing the company.
It is further submitted that a supplier of non-infringing good who assists a customer to use such goods in an infringing manner may be held liable, although there are no decided cases on this point.
4.4 Is it possible to add or subtract parties during litigation?
In terms of the rules of the High Court it is possible to join parties during litigation, however, the person wishing to join such further parties would likely bear the wasted costs of all parties already involved in the litigation.
Again, in accordance with High Court rules the case against a party may be withdrawn at any time, however, this may have the consequence that the costs of that party shall be tendered by the plaintiff withdrawing the case.
5. ENFORCEMENT OPTIONS
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
It is possible to apply for an interdict (English law: injunction) either temporary or final, even where an infringement has not yet been committed but is reasonably apprehended. A temporary interdict may be discharged by agreement between the parties or by judgment of the court.
A final interdict, on application, will only be granted if there is established a clear right, an injury actually committed or reasonably apprehended and a lack of alternative remedies. Where the facts of the case are not sufficiently clear to be decided on affidavit evidence, the substantially more complex and expensive action proceedings must be resorted to, which is instituted by summons.
In an action the plaintiff may claim the following relief:
a. an interdict;
b. delivery up of infringing articles or products;
Section 44(4) of the Patents Act provides a moratorium of nine months from the date of sealing of the patent within which period no proceedings for the infringement of a patent can be instituted except in very special circumstances by leave of the court.
5.2 Are criminal proceedings available? If so, what are the sanctions?
Criminal sanctions are not normally available against patent infringements, except where this happens in contempt of a court order.
However, the Patents Act empowers the Commissioner of Patents to punish a variety of offences by fines and/or imprisonment.
1. Misconduct at or in connection with proceedings (Rand 100 or one month).
2. Misconduct by a patent agent or patent attorney (R1000).
3. Employment by a patent agent or patent attorney of a person removed from the register or suspected from practicing as a patent agent or patent attorney (R1000 or 12 months).
4. False entry in the register (R1000 and/or 12 months).
5. Tendering in evidence a false entry in the register R1000 and/or 12 months).
6. Knowingly making a false statement or presentation to the Registrar, the Commissioner of Patents or any administrative officer under the Act (R1000 and/or 12 months).
7. Dealing in any invention or right under a patent while employed by the Patent Office (R500).
8. Suggesting that his place of business is officially connected with the Patent Office (R100 and/or three months).
9. Falsely representing that an article is patented or is the subject of a patent application (R1000 and/or 12 months).
5.3 Are border measures available?
It is possible that Customs and Excise can be alerted to the importation of a product which has been found by a court to be an infringing product and such product would be seized at the point of entry, however, Customs and Excise require prima facie proof that a product infringes a valid right which, in practice, would be a court order.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your patent office recognize and execute an arbitral aware declaring a patent invalid?
ADR proceedings are possible by agreement between the parties. The parties can agree which arbitration or mediation procedures, and venue they wish to adopt (local or foreign). Local proceedings may be conducted in accordance with the Arbitration Act 42 of 1965, as amended, or with the Rules of the South African Institute of Arbitrators.
Resolving IP disputes by ADR is not yet very common in South Africa.
6. PROCEDURE IN CIVIL COURTS
6.1 What is the format of patent infringement proceedings?
Patent infringement proceedings can be brought by application to the court of the Commissioner of Patents or by action. The latter is more intricate and more expensive but is more suitable where the issues are complicated and/or go beyond a mere application for an interdict.
Application proceedings are brought by Notice of Motion, supported, if necessary (usually), by evidence on affidavit setting out the facts and the relief claimed. If the other party wishes to defend it may file answering affidavit(s) to which the applicant may reply likewise by affidavit. The application is normally decided at a hearing on the basis of the affidavit evidence. If either party considers that there are issues which cannot be resolved on paper, it may apply for oral evidence and cross-examination to be conducted on such issues. In that case, the proceedings follow trial procedures.
Actions are commenced by summons accompanied by ‘Particulars of Claim’. If the alleged infringer wishes to defend, it must enter an appearance whereafter an exchange of pleadings follows as well as various interlocutory matters such as discovery documents. The hearing takes the form of a trial and the issues are decided on oral evidence. Before the trial the parties have to lodge statements of any expert witnesses wherein the expert witnesses have to set out their expert opinions and the reasons for such opinions. In the absence of an adequate witness statement the court may refuse to hear any evidence from the witness other than purely factual evidence.
Ever since the case of Deutsche Gesellschaft für Schädlingsbekämpfung mbH v Coopers (SA) (Pty) Ltd 1974 BP 1(CP); Coopers (SA) (Pty) Ltd v Deutsche Gesellschaft für Schädlingsbekämpfung mbH, 1975 BP 383(T) and 1976 BP 533(A) it has become the practice to complete the statements of expert witnesses in painstaking detail in order to avoid the severe potential consequences of non-compliance or inadequate compliance with the rules.
6.2 Are disputes decided by a judge or jury?
All disputes are decided by a judge, juries are not used in South Africa.
6.3 To what extent are documents, affidavits, witnesses and/or court appointed or private experts used? Is it possible to cross-examine witnesses?
Documents, unless admitted by both parties, must be proven. Section 73 of the Act creates a presumption that if a document or book bears a publication date, this date is deemed to be the date of publication unless the contrary is proved. Where documents are to be relied upon in a trial (on oral evidence), each document is introduced into the record through a witness.
Affidavit evidence may be used in application proceedings (application for revocation, application for an interdict, application for a compulsory license, application for an amendment in pending litigation and in suppositions (e.g. against an amendment).
In appropriate cases deponents may be cross-examined on their affidavits.
In all action proceedings the issues are decided on oral evidence given by witnesses either purely on the facts or on matters involving expert opinions. The latter evidence is given by expert witnesses presented by the parties. The witnesses are normally cross-examined by counsel for the parties. The judge(s) can ask questions as well.
On rare occasions the court (of its own volition or at the request of a party) may appoint one or more advisors specially qualified to assist and advise him on matters arising during the proceedings.
Also, with the consent of the parties, the court may refer any matter requiring extensive examination of documents or of scientific or technical matters or on site investigation to be referred to an advisor or panel or advisors acting as a referee.
Court appointed advisors are not allowed to decide legal issues, however, the court will accept the factual findings of the advisor (or majority finding of a panel of advisors) as part of its judgment. These findings, being findings of fact, are appealable but not reviewable.
6.4 To what extent is pretrial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
In any legal proceedings the practice concerning discovery, inspection and production of documents is governed by rule 35 of the Uniform Rules of Court. Discovery must be made in response to a formal notice within 20 court days. This is done by way of Discovery Affidavit.
Only relevant documents need be discovered which are or have been under the control of the party making discovery. Privileged documents must be listed but need not be discovered.
According to the present most up-to-date view, privilege extends not only to communications made for the purpose of litigation, but to all matters relating to professional advice.
South African law expressly affords equal status to attorneys and patent agents for purposes of privilege.
All documents must be discovered which either directly or indirectly advance or damage the case of either party.
Irrelevant documents need not be discovered and in normal circumstances a statement under oath that a document is irrelevant is conclusive.
Letters written ‘without prejudice’ should not be discovered, save by mutual consent.
Statements of witnesses for purposes of the same proceedings are not to be discovered.
If any document or tape recording is referred to in an affidavit or any pleadings, the other party may demand its production.
A party may request the court to permit inspection of things other than documents.
If it can be shown that an adverse party or a third party has information, articles or documents relevant to the proceedings such adverse or third party can be subpoenaed to give evidence, or a court order may be obtained allowing inspection of the articles or documents.
6.5 What level of proof is required for establishing infringement or invalidity?
As in other civil court proceedings, the level of proof in infringement or invalidity proceedings is on balance of probability.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Depending on the complexity of the case it may be possible to obtain a first instance decision within two years. However, complex cases may take up to about three to five years. An appeal is likely to be decided within about two years of the first instance judgment.
6.7 What options, if any, are available to defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be staged? How can a plaintiff counter delaying tactics of defendant?
Most time limits for doing anything in legal proceedings can be extended on application or by mutual consent.
Proceedings may also be delayed by instituting a variety of interlocutory proceedings such exception, applications for striking out (e.g. of allegedly scandalous, vexatious or irrelevant matter). Another tactic is to amend pleadings or introduce new grounds of particulars (e.g. in a counterclaim for revocation), which may necessitate a whole new series of countermeasures by the plaintiff. The best countermeasure is usually to respond as quickly as possible. Objecting to the court may often be counter-productive because this may often increase the delay and because the court is likely to allow the tactics by the defendant in the interests of a ‘full ventilation’ of all issues.
Attempts to stay the main proceedings may be made on the ground of lis pendens, for example, where an application for revocation of a patent is pending at the same time as there is an action for the infringement of the patent.
7. FINAL REMEDIES
7.1 What remedies are available against a patent infringer (final injunction, delivery up for destruction of infringing goods, publication of the decision, recall order, monetary remedies, etc.)?
The remedies available to the plaintiff against patent infringer are: an interdict (equivalent to an injunction in English law), delivery up for destruction of any infringing product or any article or product involving infringing or used in committing acts of infringement (including sales or promotional material); damages and costs.
The concept of punitive damages or punitive costs is not known in South African law. However, in cases of serious misconduct by either party the court may order ‘special costs’, meaning costs compensating the other party for certain real costs incurred in the proceedings which would otherwise not have been recoverable on normal taxation.
7.2 To what extent is it possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
Judgments are effective inter partes and not against third parties. If a patentee wishes to render an infringement judgment effective against third parties, those parties must be joined in the proceedings, which, in principle, is possible even when litigation is already pending.
As regards the supplier, the question arises as to whether or not the act of supplying performed by the supplier constitutes an infringement as such or at least ‘contributory infringement’ (see question 4 above).
As regards the customer, the unlawful acquiring of an infringing article or product (which includes a product manufactured by an infringing process) does not amount to a license to perform with the article or product any of the acts referred to in section 45(1) of the Act.
It is submitted that mere possession of the article or product is not an infringement until it is actually used or is converted into something else covered by a claim of the patent.
8. PRELIMINARY REFLIEF
8.1 Is preliminary relief available? If so, what preliminary measures are available (e.g. preliminary injunction) and under what conditions?
Preliminary relief is available by way of a preliminary injunction if a strong case can be made.
Application is made by Notice of Motion and must be made as early as possible. Any delay by the patentee may be fatal to the chances of success of obtaining urgent relief.
Factors to be considered (in combination):
a. prospects of success;
b. whether applicant would be adequately compensated by award of damages;
c. balance of convenience and prejudice;
d. the preservation of the status quo.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
No ex parte relief is available, where defendant is given no notice.
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched an a description of the infringing goods (and the accounting relative thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available to seizing and preserving evidence for trial?
Where there is prima facie evidence of infringement and a risk exists that evidence may be destroyed it is possible to obtain ex parte a so-called Anton Pillar order, in terms of which the defendant’s premises may be searched and evidence of infringement including accounting evidence may be taken.
It is also possible in already pending litigation to apply an inspection of premises or equipment believed to be used by a defendant in order to prove infringement.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
Among the factors to be considered by the Commissioner in deciding on whether or not to grant an interdict is included the prospect of success (see question 8.1 above) and thus a commissioner hearing a matter would permit evidence as to invalidity to be lead but will not permit the proceedings to become a revocation application by default and will rule on the interdict without prejudicing the prospects in the main matter.
8.5 What is the format of preliminary injunction proceedings?
Interdict proceedings are brought by way of Notice of Motion and all evidence is in affidavit form. A commissioner may order specific conflicting factual evidence to be heard viva voce but this is not common.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
Interdict proceedings are brought by way of Notice of Motion and all evidence is in affidavit form.
All experts are private, appointed by the parties, and such experts will provide their evidence on factual issues in affidavit form.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
As in all civil proceedings proof must be on a balance of probabilities.
8.8 How long do preliminary injunction proceedings typically last?
A preliminary interdict will usually run until the matter has been concluded.
9. APPEAL PROCEDURE
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
A preliminary interdict cannot be appealed under any circumstances.
A final ruling of any kind may be appealed to a full bench of the High Court or to the Supreme Court of Appeals, if leave to appeal is granted by the court making the final ruling. If such leave to appeal is refused, an aggrieved party may petition the Chief Justice of the Supreme Court of Appeal for leave to appeal. If this is refused and the matter has a constitutional law aspect, the matter may be appealed to the Constitutional Court, although this has never happened before in a patent matter.
9.2 How long do appeal proceedings typically last?
Appeal proceedings typically last two to four years.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
The costs for a preliminary interdict, a first instance decision on infringement, or revocation can run from Euro 75,000 – 200,000, or more , depending on the complexity of the matter, whether a patent attorney, and one or two advocates are employed, and how many witnesses are required.
Each step of appeal can cost at least as much as the first instance costs.
10.2 Are costs recoverable from the losing party?
At the Commissioner’s discretion, costs may be awarded against a losing part on one or three scales, i.e. so-called ‘party-and-party costs’ which would typically be about 40% of actual costs, ‘attorney-own-client scale’ which would typically cover about 65% of the costs, and a punitive costs order against an unethical attorney or so-called ‘de bonis propriis’ costs which would require such attorney to pay the full costs of the other party.
Typically costs are awarded on a ‘party-and-party’ scale for the costs of a patent attorney, a junior advocate and senior advocate.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
Presently there is a possibility that the account for profits principle when suing for infringement will be introduced.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
As above, there is the possibility that the accounting for profits principle when suing for infringement will be introduced.
12. USEFUL REFERENCES
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Burrell’s South African Patent and Design Law (3rd edn, 1999, Butterworths Publishers, South Africa).