Analysing South Africa’s compulsory licensing jurisprudence: Is there room for the public interest (PI) in intellectual property (IP)?

• Author: Vawda, Y.A.
• Date: 12 February 2020
• Pages: 182-198
• Published date: 12 February 2020
• Citation: (2019) IPLJ 182

ANALYSING SOUTH AFRICA’S

COMPULSORY LICENSING

JURISPRUDENCE: IS THERE ROOM

FOR THE PUBLIC INTEREST (PI) IN

INTELLECTUAL PROPERTY (IP)?



Honorary Resear ch Fellow, University of KwaZulu-Natal

ABST RACT

Despite South Af rica having provi sions for compulsory l icensing on its stat ute books

in over a centur y of patent legi slation, no compulsor y licences have been g ranted on a

pharmace utical-related patent i n the country. Given the imp act of the high prices of many

life-saving p atented medicines on afford ability and access, it rais es the question: why is

this the case? Th is article ende avours to review the c ase law on applications fo r compulsory

licences on phar maceutical a nd related patents u nder the curre nt legislation, analys e

the inter pretations placed o n the relevant section s, and draw conclusion s about judicial

reasoning, i mpediments to the gr ant of such licences, and gener ally the courts’ approach

to disputes relat ing to patents. It conclud es, among others, th at the very archite cture of the

patent landsca pe, combined with an overly form alistic approach to judic ial interpretatio n

   

KEY WORDS: compulsor y licences; patents; acc ess to medicines; South Af rica

1. I NTR ODUC TION

Compulsory licences a re generally available on a variety of ground s, most

notably on patents where the patentee is fou nd to have abused its rights in

one manner or another. Despite the ex istence of relevant provisions in over

a century of patent legislat ion, not a single compulsory licence has be en

granted on a phar maceutical-related patent in South A frica.1 This raises

obvious questions, part icularly in the context of the impact of pharmaceutical

patents on the affordabilit y of and access to medicines.2 Why ha s the resort

to this pathway to access be en so under-utilised, or so unsuc cessful when it

eventually receives a heari ng?

                 

Bonginkosi Shoz i LLB LLM PhD Candidat e.

1 CM Correa ‘Ph armaceutica l innovation, in cremental paten ting and compulso ry licensing’ (2011)

South Centre 17 available at http://citese erx.ist.psu.ed u/viewdoc/downloa d;jsessionid=7F43C

AC7AF4FFD19FE2197CA78343A43?doi=10.1.1.357.5792&rep= rep1&type=pdf (acc essed on 5

September 2018); YA Vawda ‘Patent law in emerging e conomies: South Africa’ in FM A bbott,

CM Correa and P D rahos Emerging ma rkets and the World Patent Or der (2013) 30 0.

2 See, for example, ER Gold et al ‘Are patents imp eding medical ca re and innovatio n?’ (2009)

7(1) PLoS Med avail able at https://journals.plos.or g/plosmedicine/ar ticle/file?id=10.1371/journal .

pmed.1000208&ty pe=printable (acc essed on 5 September 2018).

182

(2019) IPLJ 182

© Juta and Company (Pty) Ltd

This art icle attempts to rev iew the case law on applications for compulsory

licences on pharma ceutical and related patents since t he inception of the curre nt

legislation, analyse the inter pretations placed on the relevant sect ions,3 and

draw conclusions about judicial reasoni ng, impediments to the g rant of such

licences, and generally t he courts’ approach to disputes relat ing to patents. It

concludes, among others, that the ver y architectu re of the patent landscape,

combined with an overly formalistic appr oach to judicial interpret ation and

     

th e law.

Pharmaceutical pat ents are foregrounded here becau se the high costs of,

particularly new, medicines br ing their public health and public interest

implications to the fore.

   

As a former British colony, early patent law in South Afr ica was based on

the correspondi ng legislation in force in Britain at the t ime, with the four

provinces pre-d ating the Union of South Africa in 1910 all passing patent

legislation in one form or another.4 There were two f urther iterat ions of the

Patents Act before the current legislation. It is notewor thy that South Africa

acceded on 1 December 1947 to the Paris Convention,5 b ecame a member

of the World Trade Organisation (WTO) on 1 January 1995,6 and became

bound to the Patent Cooperat ion Treaty on 16 March 1999.7 South Africa’s

membership of the WTO and hence bei ng a signatory to the Agree ment on

Trade-Related Aspects of Intellect ual Property R ights (TRIPS Agr eement)8

necessitated the adoption of nationa l legislation and regu lations to give effect

to the TRIPS Ag reement. This was accomplished th rough the passage of the

Intellectual Pro perty Laws Amendment Act.9

  

South Africa util ises the depository system for patent applicat ions, under

which applications are examine d as to formalities with no subst antive search

and examination req uired. One of the drawbacks of th is system is that the

3 Sections 55 and 56 of the Pate nts Act 57 of 1978. The Competition Act 89 of 1998 envisa ges the

issuing of a compu lsory licence as a re medy for anti-compe titive practices, t hrough its provisio n

for divestitu re in s 58(1)(a)(iv), but this provision has not been u sed to date.

4 The earlie st of such laws in the provi nces was Act 17 of 1860 passed by the parl iament of the Cape

of Good Hope, with t he earliest Union legislation be ing the Patents, Designs , Trade Marks and

Copyright Act 9 of 1916. See T Burr ell Burrell’s South Afri can Patent and Design L aw (1999) 5.

5 Paris Conventio n for the Protection of Indu strial Proper ty, 20 March 1883.

6 World Trade Organisat ion ‘South Africa a nd the WTO’, available at https://w ww.wto.org/

english/t hewto_e/countr ies_e/south_af rica_e.htm (accesse d on 27 August 2018).

7 Companies and Int ellectual Proper ty Commission ‘Patents’, available at ht tp://www cipc.co.za/

index.php/tr ade-marks-pat ents-designs- copyright/pat ents/ (accessed on 27 Augu st 2018).

8 An nex 1C to the Marrakes h Agreement Esta blishing the WTO, sig ned on 15 April 1994 at

Marrake sh, Morocco.

9 Intellectu al Property L aws Amendment Act 38 of 1997.

ANALYSING SOUTH AFRICA’S COMPULSORY LICENSING JURISPRUDENCE 183

© Juta and Company (Pty) Ltd