Patent litigation in South Africa: overview

A Q&A guide to patent litigation in South Africa.

The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.

To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.

This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.

Janusz F Luterek, Hahn & Hahn Inc
Contents

Sources of law

1. What are the principal sources of law and regulation relating to patents and patent litigation?

The principal sources of law and regulation relating to patents and patent litigation are the:

  • South African Patents Act of 1978 (as amended from time to time by the 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) (Patents Act).

  • Patent regulations.

Procedural matters in litigation not dealt with by the patent regulations are determined by the Rules of the High Court.

South Africa has acceded to the following international treaties and conventions relating to patents:

  • WIPO Paris Convention for the Protection of Industrial Property 1883.

  • Patent Cooperation Treaty 1970.

  • WTO Agreement on Trade-Related Aspects of Intellectual Property 1994 (South Africa is a member of the WTO).

In the event of a conflict between national patent law and the Constitution of the Republic of South Africa, the Constitution (as interpreted periodically by the South African Constitutional Court) will prevail. South African statutes take precedence over any conflicting provisions in international treaties or international law not expressly incorporated into South African statutes. However, South African courts are bound by former decisions of higher ranking South African courts.

 

Court system

2. In which courts/government bodies are patents enforced?

The Registrar of Patents has some judicial powers, which in practice are mainly confined to administrative matters (including opposing administrative acts) and taxing of costs awarded by the Commissioner of Patents. The decisions of the Registrar are subject to review by, or appeal to, the Commissioner of Patents.

The Court of the Commissioner of Patents, which has the status of a division of the High Court, is the only court with jurisdiction to hear first instance patent litigation. The Judge President of the Gauteng North High Court will designate a judge or acting judge of that division to act as Commissioner of Patents in any particular case. The appointment judge will sometimes have experience in patent matters and on rare occasion, technical qualifications. The Commissioner can of his own volition, or at the request of a litigant, appoint an assessor to assist him in difficult matters (usually specialist or technical). However, in practice, an assessor has not been appointed for several decades. A first instance patent dispute can be appealed to a full court of the Gauteng North High Court (three judges) or directly to the Supreme Court of Appeal, which sits in Bloemfontein.

The Patent Office previously had jurisdiction in unopposed patent revocation matters but this is now in question following recent court rulings. The Registrar of Patents has often been cited as a co-respondent in applications for revocation and in opposition to applications for amendment. However, it is now common practice for the Registrar to carry out all patent revocations and amendments that have been ordered by the court. The Registrar has discretion to grant an extension of time in revocation proceedings,

 
3. Do the courts/government bodies deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings?

The Court of the Commissioner of Patents deals with infringement as well as invalidity. If appropriate, it will do so simultaneously.

 
4. Who can represent parties before the court and/or government body?

Any party can be represented in any legal proceedings before the Registrar of Patents or the Court of the Commissioner of Patents by:

  • A registered patent agent (admitted under old law and very few left now).

  • A patent attorney.

  • An attorney admitted to practice in the High Court or an advocate (counsel).

Only patent attorneys, attorneys admitted to practice before the High Court and advocates have the right of appearance in an appeal to a court higher than the Court of the Commissioner of Patents. However, in practice, litigants can be represented by a patent attorney and one or two advocates, depending on the degree of complexity of the matter.

 
5. What is the language of the proceedings? Is there a choice of language?

The proceedings can be conducted in any of the 11 official South African languages:

  • Sepedi.

  • Sesotho.

  • Sitswani.

  • SiSwati.

  • Tshivenda.

  • Xitzonga.

  • Afrikaans.

  • English.

  • IsiNdelbele.

  • IsiXhoza.

  • IsiZulu.

However, in practice, court proceedings in patent matters are almost exclusively in English.

 
6. To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts, or other national or international bodies, 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. The decisions of foreign courts only have persuasive effect and only become binding when adopted with approval from 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. It is not a common practice in the field of patent litigation and therefore decisions on matters such as inventive step and sufficiency of disclosure can differ substantially from foreign decisions.

 

Substantive law

7. How is patent infringement assessed?

A patent gives the patent holder the right to exclude others from making, using, exercising, disposing, offering to dispose of or importing the invention (section 45, South African Patents Act of 1978 as amended).

Section 69A limits this right by stating that it is not infringement to perform the above acts both:

  • On a non-commercial scale.

  • Solely for a 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 and agricultural chemicals or genetically modified 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 conclusively require South African courts to apply the doctrine of equivalents. However, the Court of the Commissioner of Patents (a court of first instance in patent matters) applied the doctrine when it found that a two-part cam system infringed a patent claiming a cam system.

 
8. What defences are available to an alleged infringer?

The defences available to an alleged infringer are as follows:

  • The most common defence against alleged infringement hinges on issues of interpretation of the scope of the patent claims and on whether or not the act complained of is covered by that scope.

  • The second most common defence is based on the alleged invalidity of the patent, at least to the extent of the allegedly infringed claim(s). The defendant can counterclaim in infringement proceedings for the revocation of the patent and submit a defence relying on any ground on which a patent may be revoked (section 65(4), South African Patents Act of 1978 as amended).

  • A defendant can raise invalidity as a defence against alleged infringement without necessarily counterclaiming for the revocation of the patent. Although the ''Gillette Defence'' in English law is not part of South African law, the same principles can be applied to raising invalidity as a defence in South African infringement proceedings.

  • Acquiescence, election, waiver and estoppel. However, they are rarely successful.

  • A special plea that the claimant commenced proceedings notwithstanding an undertaking not to do so.

  • A similar litigation is pending or a similar or the same matter between the same parties has already been decided upon by the courts.

  • Exhaustion of rights can be raised in appropriate cases.

The number of defences available is unlimited so an innovative defendant can present any type of defence. However, if a completely new defence is raised, the defendant will not have any legal precedents to rely on and therefore must prove the validity of the defence.

 
9. On what grounds can a patent be invalidated?

A patent can only be revoked (annulled) on the following grounds (section 61, South African Patents Act of 1978 as amended (Patents Act)):

  • The patent holder is not a person entitled under section 27 of the Patents Act to apply for the patent.

  • The grant of the patent is in fraud of the rights of the applicant or of any person under or through whom he claims.

  • The invention concerned is not patentable under section 25 of the Patents Act.

  • 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.

  • 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 to enable the invention to be carried out by a person skilled in the art of such invention.

  • The claims of the complete specification concerned are not clear or fairly based on the matter disclosed in the specification.

  • The prescribed declaration lodged in respect of the application for the patent or the statement lodged under section 30(3A) of the Patents Act contains a false statement or representation, which is material and which the patent holder knew or ought reasonably to have known to be false at the time it was made.

  • The application for the patent should have been refused on the basis that one of the following applies (section 36, Patents Act):

    • it was obviously contrary to well-established natural laws;

    • it would encourage offensive or immoral behaviour; or

    • it might be used in any manner contrary to law.

 
10. Can a court only partially invalidate a patent or transform it into a utility model?

The court can partially invalidate a patent (section 68, South African Patents Act of 1978 as amended (Patents act)). If a finding of partial invalidity is made in a counterclaim for revocation, the court can postpone an order for the revocation of the patent and give the patent holder an opportunity to restore validity by amendment.

In ordinary revocation proceedings, the court has discretion to decide whether the patent should be either (section 61(3), Patents Act):

  • Revoked.

  • Upheld and if so, whether this should be subject to any amendments of the specification and claims.

However, to date there have not been any cases regarding partially valid patents, where the patent was upheld prior to it being amended to remove the invalidity claims.

South African law makes no provision for utility models.

 
11. Is it possible to amend patent claims during proceedings?

Amendments (post-grant) can be applied for at any time. If legal proceedings are already pending, the application must be made to the court hearing the proceedings. It is good practice to publish the intention to make this amendment in the Patent Journal so that interested third parties can join the case.

 
12. Are there any grounds on which an otherwise valid patent can be deemed unenforceable?

The term for prescription in South Africa is three years. Therefore, a patent holder cannot sue for infringement if he has been aware of it for more than three years. However, there is an exception to this rule if the patent holder can provide evidence that the infringement has continued since that date or is about to recommence.

As regards exhaustion of rights, lawfully acquiring an article or product (without any conditions) originating from the patent holder or from a person authorised by the patent holder creates an implied licence to use and dispose of the article or product. This position is reinforced under the Consumer Protection Act under which a person acquiring goods can assume that the supplier is a lawful supplier of the goods.

A patent can also be unenforceable:

  • If the patent application on which a patent had been granted had not complied with the formal requirements for a patent.

  • Due to another documentary deficiency in the patent application, amendment of the patent application, or assignment of the patent from the inventors to the patentee.

 

Parties to litigation

13. Who can sue for patent infringement?

Patent holder

The patent holder can sue for patent infringement.

If the patent is assigned, the assignee can claim damages accrued prior to the assignment, if this right is expressly included in the assignment document. By leave of the court the patent holder can be substituted even after action has been instituted, provided no prejudice is caused to the defendant.

Exclusive licensee

A licensee cannot sue in his or her own name and can only join the patent holder as a co-claimant. Before instituting proceedings, the patent holder must give notice of the proposed proceedings to every licensee under the patent whose name is recorded in the register.

Non-exclusive licensee

See above, Exclusive licensee.

Distributor

This is not provided for in South African law.

Other

The patent holder can apply to the Commissioner of Patents to have its patent endorsed as a ''license of right'' (that is, a license to use the patent as a right, for payment of a royalty and under such conditions as stated in the licence or as ordered by the Commissioner). This is a very unusual procedure and there are virtually no such licences that have been endorsed on patents in South Africa. If a patent is endorsed as ''license of right'' and the patent holder fails to commence proceedings within two months of the date requested to do so by such a licensee, the licensee can commence infringement proceedings, unless the licence states otherwise.

In addition, if the patent holder on record is deceased (or liquidated) the executor(s) of the estate can sue in their own names(s).

The claimant in an infringement action must give notice of the proceedings to any co-patent holder and to every licensee recorded on the register. These interested parties can join the proceedings as co-claimants in order to recover damages.

 
14. Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement?

Any person can apply for a declaration of non-infringement against the patent holder (section 69, South African Patents Act of 1978 as amended). The validity of any patent claim can be put in issue. The applicant must show that:

  • He has applied to the patent holder in writing for a written acknowledgement to the effect of the declaration claimed.

  • He has provided the patent holder with full particulars of the process or article in question.

  • The patent holder has failed to give such an acknowledgement.

 
15. Who can be sued for patent infringement?

Any natural person or legal entity who commits an act of infringement (see Question 7) can be sued.

The position on whether an interdict (injunction) can be obtained against ''contributory infringement'' is not conclusive. However, an interdict should be available under South African common law where a person becomes liable if his act or omission in some way causes the deed or its consequence. This is currently the subject of a debate among South African jurists and several matters of this type are pending before the court. Therefore, there is likely to be a legal precedent on this subject in due course.

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. In addition, a supplier of non-infringing goods who assists a customer to use such goods in an infringing manner can also be held liable. However, there are no decided cases on this point.

 
16. Is it possible to add or remove parties during litigation?

Under the rules of the High Court it is possible to add parties during litigation. However, the person wanting to join the litigation is likely to bear the wasted costs of all parties already involved in the litigation.

In addition, parties can be removed at any time. However, the court can order the claimant making the application to pay the costs of the withdrawing party.

 

Enforcement options

17. What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?

Civil proceedings

Parties can apply for a temporary or final interdict (injunction), even when an infringement has not yet been omitted but is reasonably apprehended. A temporary interdict can be discharged by agreement between the parties or by judgment of the court.

Criminal proceedings

Criminal sanctions are not normally available against patent infringements, except where the accused is found to be in contempt of a court order. However, the Commissioner of Patents can prosecute the following offences by fines and/or imprisonment (South African Patents Act of 1978 as amended):

  • Misconduct at or in connection with proceedings.

  • Misconduct by a patent agent or patent attorney.

  • Employment by a patent agent or patent attorney of a person removed from the register or suspected of practicing as a patent agent or patent attorney.

  • False entry in the register.

  • Tendering in evidence a false entry in the register.

  • Knowingly making a false statement or presentation to the Registrar, the Commissioner of Patents or any administrative officer under the Act.

  • Dealing in any invention or right under a patent while employed by the Patent Office.

  • Suggesting that his place of business is officially connected with the Patent Office.

  • Falsely representing that an article is patented or is the subject of a patent application.

Border measures

Customs and Excise can be alerted if an infringing product is due to be imported and that product can be seized at the point of entry. However, Customs and Excise require proof that a product infringes a valid right which, in practice, would be a court order.

 
18. Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings?

There is no express requirement to send a cease and desist letter (letter of demand). However, if the other party ceases its activities immediately on receipt of a notice of motion or a summons, the court cannot award costs against the infringer.

Unjustified threats of infringement can be prevented by an application to court for an interdict and damages. However, going ahead with what has been threatened, whether successful or not, would put an end to any such application or claim for damages.

 
19. To what extent are courts willing to grant cross-border or extra-territorial injunctions (preliminary or permanent)?

It is highly unlikely that a South African court would grant any cross-border or extra-territorial injunctions, except in situations where acts committed abroad result in an infringement within South African borders. This could apply to advertisements in publications distributed in South Africa or using the internet. These situation could lead to an interdict (injunction) if the jurisdiction can be established against the defendant in South Africa (such as by an arrest of the defendant or the attachment of some material or immaterial property of the defendant in South Africa).

 
20. To what extent do courts recognise the blocking effect of "torpedo" actions abroad?

It is extremely unlikely that a South African court would recognise any blocking effect of ''torpedo'' actions.

 
21. To what extent are arbitration, and alternative dispute resolution (ADR) methods (such as mediation), available to resolve patent disputes?

Arbitration

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 can be conducted in accordance with the Arbitration Act 42 of 1965, as amended, or with the Rules of the South African Institute of Arbitrators. Intellectual property disputes are rarely resolved by ADR.

ADR

See above, Arbitration.

See Litigation and enforcement in South Africa: Overview.

 

Competition and anti-trust

22. Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?

Anti-trust proceedings are unknown in South Africa in the context of patent enforcement. However, the competition authorities in South Africa continue to scrutinise the activities of market participants. Therefore, in the future it may be possible to use the Competition Act to prosecute a patent holder and/or its licensee for anti-trust (anti-competitive) behaviour.

If the patent holder demonstrates inequitable conduct in infringement proceedings this could lead to penalties such as the court's refusal to amend patent claims to restore validity and special cost awards. In addition, an ''aggrieved person'' can commence legal proceedings to restrain unjustifiable threats under a patent (or event where no patent exists at all) (section 70(1), South African Patents Act of 1978 as amended). The possible remedies are:

  • A declaration that the threats are unjustifiable.

  • An interdict.

  • Damages.

A person can commence separate proceedings with the Competition Commission against a party who is in breach of the Competition Act.

 
23. To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?

There has not been a case in South Africa where the enforcement of a patent exposes the patent holder to liability for an anti-trust violation. However, in principle the Competition Commission can investigate and prosecute the patent holder for breach of the Competition Act if:

  • The patent holder fails in an infringement matter due to a lack of evidence of infringement and was either shown to have known this before commencing litigation or continued litigation once this became apparent from the evidence.

  • The patent is held to be invalid and the patent holder was either shown to have known this before commencing litigation or continued litigation once this became apparent from the evidence.

 

Procedure in civil courts

24. 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 (see below). An action is more intricate and more expensive but is more suitable when the issues are complicated and/or go beyond a mere application for an interdict (injunction).

Application proceedings are brought by notice of motion and usually supported by an affidavit setting out the facts and the relief claimed. The other party can file a defence in the form of an answering affidavit and the applicant can submit a reply in the same manner. The application is typically decided at a hearing on the basis of the affidavit evidence. If either party considers that there are issues that cannot be resolved on paper, it can apply for oral evidence and cross-examination to be conducted on those issues.

Actions are commenced by summons and accompanied by particulars of claim. If the alleged infringer wishes to defend, it must enter an appearance by filing and serving a notice of intention to defend and participate in various interlocutory matters such as discovery. During the trial, the issues are decided on oral evidence. Before the trial the parties must lodge statements of any expert witnesses setting out their opinions and the reasons for the opinions formed. If adequate witness statements are not provided, the court can refuse to hear any oral evidence other than factual evidence. In practice, parties produce detailed statements to avoid these severe consequences.

All disputes are decided by a judge; juries are not used in South Africa.

There is a moratorium of nine months from the date of sealing of the patent within which no proceedings for the infringement of a patent can be instituted, except in very special circumstances by leave of the court (section 44(4), South African Patents Act of 1978 as amended).

 
25. What are the rules and practice concerning evidence in patent infringement proceedings in your jurisdiction?

Documents

All documents must be proven, unless they are admitted by both parties. There is 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 (section 73, South African Patents Act of 1978 as amended). All documents relied on during trial must be introduced into the record through a witness.

Witness evidence

All proceedings are decided on by oral evidence given by witnesses or experts.

Affidavit evidence can be used in application proceedings (such as applications for revocation, applications for interdicts (injunctions), applications for a compulsory licence and applications for amendments in pending litigation and suppositions). Witnesses can be cross-examined by counsel for the parties on their affidavits, if appropriate. The judge(s) can ask questions to the witness as well.

On rare occasions the court (of its own volition or at the request of a party) can appoint one or more advisers specially qualified to assist and advise him on matters arising during the proceedings. In addition, with the consent of the parties, the court can refer any matters requiring extensive examination of documents, scientific or technical matters or site investigation to an adviser or panel or advisers acting as a referee. Court-appointed advisers cannot decide legal issues. However, the court will accept the factual findings of the adviser (or majority finding of a panel of advisers) as part of its judgment. These findings are appealable but not reviewable (appeal proceedings and review proceedings are separate proceedings, with review proceedings being reserved for circumstances such as gross errors of the law and the impropriety of a judge).

It should be noted that the appointment of advisers by the court is extremely rare and has not occurred in a patent matter for several decades.

Expert evidence

The parties can appoint as many expert witnesses as they wish and at their own cost. However, each expert witness must be qualified as an expert and the other party can challenge any expert witness as to their actual expertise. A court can dismiss the evidence of an insufficiently qualified or unsuitable expert witness.

All expert witnesses are notified to the other party and a summary of their expert witness evidence must be served at least ten days prior to the trial. The summary itself is not evidence but a witness can be cross-examined on the basis of any deviations from the expert witness summary they provided.

An expert witness is expected to be neutral and is theoretically there to assist the court. The evidence of an overtly partisan expert witness may be ignored.

 
26. Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?

In South Africa, evidence is led by the parties and not collected by the state or the court. Therefore, evidence obtained in criminal proceedings is admissible in civil proceedings and vice versa. However, the evidence must still be proven and the evidence of a person with personal knowledge of the document must be provided in support.

 
27. Is evidence obtained in civil proceedings admissible in other civil proceedings?

In South Africa, evidence is led by the parties and not collected by the state or the court. Therefore, evidence obtained in civil proceedings is admissible in other civil proceedings. However, the evidence must still be proven and the evidence of a person with personal knowledge of the document must be provided in support.

 
28. To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?

Pre-trial discovery

Pre-trial discovery, inspection and the production of documents is available in South Africa (rule 35, Uniform Rules of Court).

Discovery must be made by way of a discovery affidavit and in response to a formal notice within 20 court days. Only relevant documents (that is, documents that directly or indirectly either advance or damage the case of either party) must be discovered, which are or have been under the control of the party making discovery. Irrelevant documents need not be discovered and usually a statement under oath that a document is irrelevant is conclusive.

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 the purposes of privilege.

Letters written ''without prejudice'' must not be discovered, save by mutual consent. Statements of witnesses for the purposes of the same proceedings are also not discovered. In addition, if any document or tape recording is referred to in an affidavit or any pleadings, the other party can demand that it is disclosed.

A party can request the court to permit inspection of things other than documents.

Other mechanisms

If there is evidence that an adverse party or a third party has information, articles or documents relevant to the proceedings, he can be subpoenaed to give evidence, or a court order can be obtained allowing inspection of the articles or documents.

 
29. 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.

 
30. How long do patent infringement proceedings typically last?

Depending on the complexity of the case, parties can obtain a first instance decision within two years. However, complex cases can take between three and five years. An appeal is likely to be decided within two years of the first instance judgment. Urgent interim interdicts (injunctions) can be obtained within a few months, in exceptional cases.

Fast-track procedures

An urgent interdict may be possible. However, the success rate of these applications is below 20%.

Timetable

Parties cannot agree on a timetable for the hearing of a matter. This solely depends on the court's availability and the Rules of the Court.

Delay

Most time limits for doing anything in legal proceedings can be extended on application or by mutual consent.

Proceedings can also be delayed by:

  • Commencing interlocutory proceedings such as applications for striking out.

  • Amending pleadings or introducing new grounds of particulars (such as in a counterclaim for revocation), which may require pleadings by the claimant. Objecting to the court can often be counter-productive because this can often increase the delay and because the court is likely to allow the tactics of the defendant in the interests of a full disclosure of all issues.

  • Applying to stay the main proceedings on the grounds that an application for revocation of a patent is pending.

 

Preliminary relief

31. Is preliminary relief available, and if so what measures are available and under what conditions?

Search and preservation orders

It is possible to apply to the court for a without notice Anton Pillar order for the seizure and preservation of evidence if there is a demonstrable risk that evidence will be destroyed if the infringer is forewarned. The court does not easily grant such an order and when such an order is granted, it will be for a specific period of time. If a summons or an application is not issued by the claimant within that time then the order lapses and all the materials seized are returned. The court appoints a third party to hold the evidence until the matter is concluded.

Injunctions

Preliminary relief is available by way of a preliminary injunction (an urgent or without notice interdict) 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 patent holder can be fatal to its chances of success. The factors to be considered by the court (in combination) are:

  • The prospects of success.

  • Whether the applicant would be adequately compensated by award of damages.

  • The balance of convenience and prejudice.

  • The preservation of the status quo.

If granted, a preliminary injunction will have a return date by which the claimant must commence proceedings, failing which the preliminary injunction will fall away and the defendant will have a claim for damages against the claimant.

It is highly unlikely that a South African court would grant any cross-border or extraterritorial injunctions, except in situations where acts committed abroad result in an infringement within South African borders (see Question 19).

 
32. Can a protective writ be filed at the court at which an ex parte application may be filed against that defendant?

There is no such procedure in South Africa.

 
33. What is the format/procedure of preliminary injunction proceedings?

General

Interdict (injunction) proceedings are brought by way of notice of motion and all evidence is in affidavit form. A commissioner can order specific conflicting factual evidence to be heard orally but this is not common.

Level of proof

As in civil proceedings, the level of proof is on a balance of probabilities.

Evidence

See above, General. All experts are private, appointed by the parties, and must provide their evidence on factual issues in affidavit form.

Patent validity

The interdict proceedings do not determine the validity of the patent. Therefore, the defendant is only required to provide evidence proving invalidity, at first glance.

Length of proceedings

A preliminary interdict can last between several weeks and several months. The applicant must act with haste and diligence and any delays on his part can result in the interdict not been granted.

 
34. If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?

If a patent holder obtains a preliminary interdict (injunction) and later loses the case, he may be held liable for all losses of the alleged infringer as a result of the interim interdict. The alleged infringer must prove his actual losses and not the profit made by the patent holder while he was kept out of the market, together with any necessary legal and associated costs.

If the patent holder is a small entity, or a foreign entity without substantial assets in South Africa, the alleged infringer will usually demand security for costs and losses if the interim interdict is later overturned. This can take the form of a bank guarantee or other financial instrument.

 

Final remedies

35. What remedies are available against a patent infringer?

Permanent injunction

Unless the patent expired before the conclusion of the patent infringement trial, the court will always grant a permanent interdict (injunction) against an infringer if there has been a finding of infringement and the interdict was requested by the patent holder. However if the patent has expired, the court cannot grant an interdict against the infringer as there are no rights to protect in future. Therefore the court will only award damages for past infringement during the life of the patent.

A permanent interdict will only be granted if the applicant can establish a clear right (that is, an injury actually committed or reasonably apprehended and a lack of alternative remedies).

The grant of a permanent injunction will prevent all infringement of the patent and not only the specific infringement complained of.

Permanent interdicts are effective between the parties themselves and not against third parties. If a patent holders 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. Therefore interdicts are not effective against suppliers and customers unless they have been joined in the proceedings.

With regards to suppliers, it is a question of fact as to whether the act of supplying performed by the supplier constitutes an infringement or at least contributory infringement (see Question 4).

With regard to customers, the unlawful acquiring of an infringing article or product, (which includes a product manufactured by an infringing process) does not amount to a licence. However, the Consumer Protection Act introduced the presumption that a consumer who acquires the goods from a supplier can assume that the goods are lawfully supplied, unless the consumer knew that the goods were infringing goods. Therefore the authors consider that mere possession of the article or product is not an infringement and the third party cannot be joined into proceedings on that basis.

Monetary remedies

The court can award the following monetary remedies:

  • Damages calculated as the loss of profits of the patent holder as a result of the patent infringement.

  • Reasonable royalties in lieu of damages.

  • Costs of the litigation against either of parties and to any degree it deems fit under the circumstances, such as:

    • ''party-and-party'' costs, which are typically about 40 of the actual costs;

    • ''attorney-and-client'' costs, which are typically 60 per cent of the actual costs; or

    • ''attorney-and-own client'' costs, which are typically 90 per cent of the actual costs. This is rarely awarded.

  • If the attorney has acted unethically the costs can be awarded de bonis propris against the attorney himself.

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 can order ''special costs'' (that is, costs compensating the other party for certain real costs incurred in the proceedings, which would otherwise not have been recoverable on normal taxation).

In practice, there has not been an award of damages by the court either for loss of profit or on the basis of a reasonable royalty for many years. Once the court has determined liability, the parties generally negotiate a settlement of the damages claim. However, the issue of costs is decided in almost every case and can exceed the value of the damages proved.

Delivery up or destruction of infringing goods

The court can order the delivery up and/or destruction of infringing goods, to the extent that the infringement cannot be separated from the goods.

Publication of the decision

All court proceedings are public so anyone can obtain a copy of a decision. However, there is no formal publication process by the court or the Patent Office.

Recall order

This order forms part of an order for delivery up.

Declaration of infringement and validity

In principle, the court can order a declaration of infringement and validity.

Others

Not applicable.

 

Appeal procedure

36. What avenues of appeal are available for a defeated party and under what conditions?

A preliminary interdict cannot be appealed under any circumstances.

A final ruling of any kind can 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 leave to appeal is refused, an aggrieved party can petition the Chief Justice of the Supreme Court of Appeal for leave to appeal. If this is refused, the matter may be appealed to the Constitutional Court. However, this has never happened before in a patent matter.

If an appeal is filed, relief is usually stayed pending appeal. However, the court can order compliance with a court order pending an appeal, if requested by the successful party.

Appeal proceedings typically last between two and four years.

 

Litigation costs

37. What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?

The costs for a preliminary interdict (injunction), a first instance decision on infringement, or a revocation can be between EUR75,000 and EUR200,000, or more, depending on:

  • The complexity of the matter.

  • Whether a patent attorney, and one or two advocates are employed.

  • How many witnesses are required.

Appeal proceedings can cost at least as much as the first instance costs.

At the Commissioner's discretion, costs may be awarded against a losing part on one of three scales (see Question 35, Monetary remedies). Typically costs are awarded on a ''party-and-party'' scale for the costs of a patent attorney, a junior advocate and senior advocate.

 

Reform

38. What are the important developing and emerging trends in your country's patent law?

The account for profits principle is likely to be introduced to patent infringement proceedings. In addition, the patent and other IP laws are being amended to protect indigenous traditional knowledge and biological resources. Different forms of evidence may be required to prove and defend against cases brought under these headings.

At present South Africa is a non-examining country. However this is likely to change and all South African patent applications will undergo a formal examination.

 

Online resources

South African Legal Information Institute

W www.saflii.org/

Description. The Southern African Legal Information Institute publishes legal information for free public access, which comprises mainly of case law and legislation from South Africa.

South African Online Patent Search

W www.zaip.org/patent_search

Description. This website is operated and maintained by the Companies and Intellectual Property Commission (South African Patent Office). The data on the website is not very reliable mainly due to scanning errors and indexing problems. In all instances a manual search at the Patent Office should be used to confirm whether a patent exists or not and whether it is in force or not.



Contributor profile

Janusz F Luterek, Partner

Hahn & Hahn Inc

T +27 123421774
F +27 12 349 9459
E janusz@hahn.co.za
W www.hahn.co.za

Professional qualifications. B.Eng (Chemical); Professional Engineer (Pr.Eng); B.Proc; High Court of South Africa, Attorney; Patent Attorney

Areas of practice. Chemistry; chemical engineering; food and beverages; pharmaceutical; electrical and mechanical matters.

Recent litigation and transactions

  • Representing BASF in patent litigation.

  • Representing Omega Foundry Equipment in copyright litigation.

  • Representing Master Blaster in patent litigation.

  • Dispute between two automotive multinationals on a licensing agreement.

Languages. English and Afrikaans

Professional associations/memberships. FICPI; AIPPI; MAIChE; ECSA; DRI.


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