Case Comments: Of Liability for Patent Infringement, Public Interest, and Effective Patent Terms: Cipla Medpro v Aventis Pharma; Aventis Pharma SA v Cipla Life Sciences

• Jurisdiction: South Africa
• Published date: 25 May 2019
• Date: 25 May 2019
• Citation: (2012) 24 SA Merc LJ 456
• Pages: 456-466
• Author: Coenraad Visser

Of Liability for Patent Infringement, Public

Interest, and Effective Patent Terms: Cipla

Medpro v Aventis Pharma; Aventis Pharma SA v

Cipla Life Sciences

COENRAAD VISSER

University of South Africa

Cipla Medpro v Aventis Pharma (139/12); Aventis Pharma SA v Cipla Life

Sciences (138/12) [2012] ZASCA 108 (26 July 2012) concerned two appeals.

The protagonists in each appeal were one or more companies within the

Aventis group (‘Aventis’) arranged against one or more companies within

the Cipla group (‘Cipla’).

Both appeals concern South African Patent 93/8936, registered in the name

of Aventis Pharma SA, a French corporation. The patent will expire on 30

November 2013.

Aventis sells in South Africa a pharmaceutical product known as Taxotere,

registered for sale under the Medicines and Related Substances Act 101 of

1965. The active ingredient is docetaxel – a chemical compound in the taxoid

family, also referred to as a taxane derivative. Docetaxel was synthesised in

1986; it was the subject of a patent that expired in 2007. It is used to treat

various cancers. It is diluted in a perfusion solution (typically, but not

necessarily, a saline solution) and administered by way of a drip. The

components of Taxotere are sold separated in two vials. The contents of the

two vials are mixed immediately before use to produce a composite solution

that is injected into the bag of saline solution. Aventis says that Taxotere falls

within the terms of its patent.

In 2006, in anticipation of the expiry of the patent term for Taxotere,

Aventis developed Docetere – its own generic version of Taxotere. Docetere is

the same product as Taxotere, but rebranded and priced to compete with

generics that can be expected to enter the market when the patent expires.

Early in 2011 Aventis became aware that Cipla had applied for the

registration of, and intended importing and selling, a generic equivalent of

Taxotere, which it calls Cipla Docetaxel. In all material respects the

components of Cipla Docetaxel resemble those of Taxotere. Its components

are also sold separated into two vials – one containing Cipla Docetaxel, and

the other the Cipla Docetaxel solvent. The contents of the vials are mixed

and administered in the same way as Taxotere.Aventis informed Cipla that the

exploitation of Docetaxel would infringe its patent, and sought an undertaking

that Cipla would not ‘make, use, exercise, dispose or offer to dispose of or

456

(2012) 24 SA Merc LJ 456

© Juta and Company (Pty) Ltd