At a Glance: Patent Enforcement Procedures in South Africa

Patent application procedure

Lawsuits and courts

What legal or administrative procedures are available to enforce patent rights against an infringer? Are there specialized jurisdictions before which an action for patent infringement can or must be brought?

South African patent law is governed by the Patents Act No. 57 of 1978, as amended (the Patents Act). The Patent Act provides for infringement proceedings, which take place in the Court of the Commissioner of Patents, a specialist court in the Gauteng Division of the High Court of South Africa, Pretoria. No other form of judicial or administrative procedure is provided for the enforcement of patent rights, and only the Tribunal of the Commissioner of Patents has jurisdiction as a court of first instance to hear questions relating to the enforcement of patent rights. .

Essay Format and Duration

What is the format of a patent infringement lawsuit?

Patent enforcement proceedings can be initiated in two ways: by petition and by action. In motion proceedings, evidence is contained in affidavits and, in the normal course of proceedings, no oral evidence is heard. The case may, however, be referred to oral evidence in the event of dispute of the facts.

The common approach to patent enforcement is the litigation route, due to the high likelihood of a factual dispute. Evidence is provided by expert witnesses, in the form of oral testimony, and other evidence may also be presented in the form of an affidavit. Witnesses are examined, cross-examined and re-examined. The length of a trial depends on the complexity of the case and can range from one or two days to five or six days or even longer.

Judgment in petition and action proceedings is given by the Commissioner of Patents (a High Court judge appointed to the Court of the Commissioner of Patents).

Evidence requirements

What are the burdens of proof to establish the infringement, invalidity and unenforceability of a patent?

The patentee bears the burden of proving infringement on a balance of probabilities. Anyone challenging the validity of the patent bears the burden of proving invalidity on a balance of probabilities.

Stand up to carry on

Who can sue for patent infringement? Under what conditions can an accused infringer sue for a court order or statement on the charge?

Only a patentee can sue for patent infringement; however, a licensee as of right may also sue for infringement, subject to certain conditions.

A patentee must notify each licensee of the patent before bringing an action for infringement, and any licensee has the right to act as co-plaintiff.

In the event of co-ownership of a patent, any co-patent may bring an action for infringement and shall notify any other co-patent, and any other co-patent may act as co-plaintiff.

The accused infringer may file a counterclaim for the revocation of the patent. This claim is heard at the same time as the claim for infringement.

Incitement, and Contributory and Multiparty Infringement

To what extent can a person be held liable for having instigated or contributed to the infringement of a patent? Can several parties be jointly liable for infringement if each only practices some of the elements of a patent claim, but together they practice all the elements?

Contributory infringement is recognized in South African common law as a tort, and more specifically as unlawful competition; therefore, anyone who procures, induces, aids or encourages others to infringe a patent will be liable for an unfair competition tort.

For contributory infringement to be established, there must be an actual act of infringement. The courts have left open the issue of joint and several liability of multiple parties who each practice some of the elements or steps of a claim, and practice all of the elements or steps of a claim together; however, where multiple parties have a common design to infringe the patent, they should be held liable under the tort of unfair competition.

Joinder of several defendants

Can multiple parties be added as defendants in the same lawsuit? If yes, what are the requirements? Should all the defendants be accused of having infringed all the same patents?

Multiple parties may be joined as defendants in an infringement action relating to the patent or patents being sued, provided that substantially the same issue of law or fact arises.

Offense by foreign activities

To what extent can activities that take place outside the jurisdiction justify a charge of patent infringement?

The act of infringement must take place in South Africa; however, the product-by-process provision of the Patents Act may permit the exercise of a process to produce a product outside of South Africa to support an action for infringement when the product is used, advertised or sold in South Africa.

The Patent Act provides that a patent claim for a process or apparatus for making any product shall be construed as extending to that product when made by the process or apparatus claimed; thus, if the product is sold in South Africa, it will infringe the patent even if the product was manufactured outside of South Africa, provided that the process or apparatus infringes the patent.

Infringement by equivalents

To what extent can it be proven that the “equivalents” of the claimed subject matter are infringing?

The doctrine of equivalents is not part of South African law. A purposive construction of the claims is applied to determine which are, and which are not, the essential integers of the claim. When interpreting the scope of the claim, the court will consider which integers are essential to the invention and which are non-essential, and then disregard non-essential integers to determine if there is infringement. .

Discovery of evidence

What mechanisms are available to obtain evidence from an opponent, third parties or from outside the country to prove infringement, damage or invalidity?

Disclosure may be requested under the Uniform Rules of the Court of all documents relevant to the matter in dispute. Confidential documents should be discovered, but privileged documents should not. If a party fails to make the discovery, it can be compelled by the court after another party successfully applies to the court.

In addition, inspection of a product may be requested to determine, for example, whether it infringes a patent. The person inspecting the product is required to write an inspection report. It is also possible to subpoena witnesses and bring relevant documents with them to court.

You can also rely on a Anton Piller order, which permits the search of premises for documents or materials as specified in the order, as well as the removal of documents for safekeeping, pending the discovery process and trial.

Dispute Calendar

What is the typical timeline for a patent infringement action in trial and appellate courts?

The action for infringement is brought by the issuance of a combined summons. Within 10 court days from the date of service of the combined subpoena on the defendant, the defendant must notify the plaintiff of their intention to defend the case. Within 20 hearing days of the delivery of the defendant’s notice of intention to defend, the defendant must file a brief setting out the defenses and any counterclaim. Within 15 hearing days following the submission of the defendant’s plea and counterclaim, the plaintiff must submit a reply to this plea and a plea to the counterclaim. Within 10 hearing days of the submission of the counterclaim, the defendant must file a replication in counterclaim, if applicable.

After the closing of the pleadings, a trial date can be requested and trial preparation begins, including the discovery of relevant documents. The time between the issuance of the combined summons and the trial hearing is generally between one and two years.

The appeal process can take another one to one and a half years.

Litigation costs

What is the typical cost range for a patent infringement action before trial, during trial and for an appeal? Are contingency fees allowed?

The costs of any proceeding will depend on factors such as the volume of evidence, the complexity of the case and the length of the hearing before the Commissioner of Patents. Additionally, the seniority of attorneys briefed affects the quantum of costs, and this may play a role in the decision to hire both senior and junior attorneys.

The cost of a trial can be between 200,000 and 500,000 USD. A call can cost between 100,000 and 200,000 USD. The losing party is generally ordered to pay the taxed costs, which may be between one third and one half of the costs actually incurred by the winning party.

Contingent fees, as regulated by the Contingent Fee Act, are permitted in South Africa but are not commonly used in patent litigation.

Court of Appeal

What remedies are available following an unfavorable decision in a patent infringement lawsuit? Is new evidence allowed at the appeal stage?

The Patent Act provides an appeal against any order or decision of the Commissioner of Patents. An application for leave to appeal must be made, as there is no appeal as of right. If granted, the case usually goes to the Supreme Court of Appeal.

Leave to appeal to the Full High Court may also be granted. It is also possible to seize the Constitutional Court when the case concerns the application or the interpretation of the Constitution.

New evidence is very rarely allowed in an appeal.

Competition Considerations

To what extent can the enforcement of a patent expose the patent holder to liability for a violation of competition, unfair competition or business-related tort?

Enforcement of a valid patent does not expose its holder to liability for competitive infringement, unfair competition, or business-related tort.

Alternate Dispute Resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

It is possible for the parties to resort to alternative means of dispute resolution in patent disputes. In such cases, an arbitration agreement, for example, should include clauses allowing the parties to give effect to the conclusions of an arbitrator. For example, the arbitration agreement could include clauses that if the arbitrator finds the patent invalid and there is no appeal, or if the patent is declared invalid on appeal , the patentee is then required to surrender the patent .

Date declared by law

Correct the

Indicate the date the above information is accurate.

February 1, 2022.

About Mitchel McMillan

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