Cipla Medpro (Pty) Ltd v Aventis Pharma SA

• Jurisdiction: South Africa
• Judge: Southwood J
• Judgment Date: 20 October 2011
• Citation: 2011 JDR 1745 (CP)
• Docket Number: 93/8936
• Court: Commissioner of Patents

Southwood J:

[1]

The applicant seeks an order:

(1)

Declaring the amendment of patent 93/8936 allowed by the Registrar of Patents on 2 July 2007 ('the amendment') to be in conflict with section 51(7) of the Patents Act 57 of 1978 ('the Act); and

2011 JDR 1745 p2

Southwood J

(2)

Setting aside the amendment in terms of section 51(10) of the Act; and

(3)

Directing the patentee to pay the costs of this application.

[2]

The patentee is the proprietor in terms of the Act of South African patent number 93/8936 entitled 'New Taxoid-Based Compositions' ('the patent'). On 28 March 2007 the patentee applied in terms of section 51(1) of the Act to amend the patent. The application was on form P13 with the proposed amendments shown on the pages attached. At that stage claim 1 of the patent read as follows:

'1.

An injectable composition comprising a taxane derivative in a surface-active agent and an additive which prevents the formation of, or breaks, a gelled phase during the mixing of the solution with an aqueous medium.'

The applicant sought to amend claim 1 so that it would read as follows:

'1.

An injectable composition comprising (a) a taxane derivative in a polysorbate and (b) an additive, (a) and (b) being provided in ampoules, bottles or a double compartment device, the injectable composition being produced by mixing (a) and (b) to form an intermediate solution, wherein the additive prevents the formation of, or breaks, a gelled phase during the mixing of the intermediate solution with an aqueous medium.'

(The other amendments are not relevant and may be ignored).

2011 JDR 1745 p3

Southwood J

[3]

The Registrar of Patents allowed the amendment on 2 July 2007. The applicant launched this application on 24 March 2011 and seeks the relief on one ground only: i.e. that the amendment was in conflict with section 51(7) of the Act because it was not covered by the pre-amendment claim 1. The subsection expressly prohibits an amendment of a complete specification 'if the specification as amended would include any claim not wholly within the scope of a claim included in the specification before amendment'.

[4]

The applicant's founding affidavit accurately summarises what the court is required to do. It must construe the relevant claims before and after the amendment in question and determine whether the relevant claim of the specification as amended is 'wholly within the scope of a claim included in the specification before amendment' – see Kimberley-Clark of South Africa (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd v Procter and Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA) at 14I-15B; 9H-10B and 12H-I (1998 BIP 228 (SCA) at 242A-D; 236C-F and 239G); Otter Controls Ltd and Others v Strix Ltd and The Registrar of Patents 1999 BIP 206 (CP) at 211A and...