Cipla Agrimed (Pty) Ltd v Merck Sharp Dohme Group

• Jurisdiction: South Africa
• Judge: Teffo J
• Judgment Date: 01 April 2014
• Docket Number: 1998/10975
• Court: Commissioner of Patents
• Hearing Date: 01 March 2014
• Citation: 2014 JDR 0701 (CP)

Teffo, J:

[1]

The applicant seeks an order for the revocation of the South African Patent Number 1998/10975 ("the 1998 patent") held by the joint patentees ("the respondents herein").

[2]

The application is based on the ground that the invention as specified in claims 1 to 29 of the 1998 patent, is not patentable in terms of section 25 of Act 57 of 1978 ("the Patents Act"). Further that the invention lacks novelty in that it was not new as at the priority date of its invention.

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Teffo, J

[3]

The applicant contends that claims 1 to 29 of the 1998 patent is disclosed in, and therefore anticipated by, the specification of patent number 92/7457 ("the 1992 patent"), which was made available to the public on 30 March 1993 in terms of sections 43(1) and 43 (3) of the Patent Act.

[4]

The application is opposed.

[5]

Claim 1 of the 1998 patent provides as follows:

"A long – acting injectable formulation comprising:

(a)

a therapeutic agent selected from the group consisting of insecticides, acaricides, parasiticides, growth enhancers and oil- soluble NSSIDS,

(b)

hydrogenated castor oil, and

(c)

a hydrophobic carrier comprising:

(i)

triacetin, benzyl benzoate or ethyl oleate or a combination thereof; and

(ii)

acylated monoglycerides, propyl dicaprylates/ dicaprates, caprylic / capric acid, triglycerides, or a combination thereof."

[6]

It is common cause between the parties that integers (a) and (b) referred to supra are disclosed in the 1992 patent.

[7]

It is also common cause between the parties that the 1998 patent has the priority dates of 3 December 1997 and 7 May 1998. Further that the 1992 patent was made available to the public before the relevant priority dates of the claims.

[8]

The respondents deny that the invention claimed in claims 1 to 29 did not involve an incentive step and that the invention would have been obvious to a person skilled in the art of having regard to the specification of the 1992 patent in the light of the knowledge of the skilled addressee immediately before the relevant priority dates. They also seek

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certification in terms of section 74(1) of the Patents Act that each of the claims of the 1998 patent is valid.

[9]

The issue for determination is whether the particular combination of hydrophobic carriers claimed in integer (c) of claim 1 of the 1998 patent is disclosed in the 1992 patent and whether the 1992 patent anticipates the claims of the patent under review.

[10]

The following parts of section 61 and 25 of the Patents Act are relevant to the relief sought:

Section 61 (1) (c) reads as follows:

"Grounds for application for revocation of patent

"(1) Any person may at any time apply in the prescribed manner for the revocation of a patent on any of the following grounds only, namely:-

(a)

that the invention concerned is not patentable under section 25;

(3) The commissioner shall decide whether the patent shall be revoked or whether and, if so, subject to what amendments, if any, of the specification or claims thereof, the patent shall be upheld. Provided that the commissioner shall not allow any amendment which is in conflict with the provisions of section 51(6) or (7): Provided further that the commissioner may in the exercise of his discretion as to costs take into consideration the conduct of the patentee in framing his specification and claims and permitting them to remain as so framed."

Section 25 reads:

"Patentable inventions

(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.

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Teffo, J

(5) An invention shall be deemed to be new if it does not form part of the state of art immediately before the priority date of any claim to that invention.

(6) The state of the art shall comprise 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 easier than that of the invention.

(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 state of the art by virtue only of subsection (6) and disregarding subsections (7) and (8)."

[10]

The rules for interpreting a patent were confirmed by Harms JA in Monsanto Co v MDB Animal Health (Pty) Ltd (Formerly MB Biologics CC) 2001 (2) SA 887 (SCA) as follows at p891 para 8 et seq:

"[8] The rules relating to the interpretation of patents have often been stated and do not need any reformulation. The problem lies in their sensible application in any given case. For present purposes the following rules as they appear in Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 614 A-616 D may be emphasised:

(a)

a specification should be construed like any other document, subject to the interpreter being mindful of the object of a specification and its several parts;

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Teffo, J

(b)

the rule of interpretation is to ascertain, not what the inventor or patentee may have had in mind, but what the...