Glaxo Group Ltd v Cipla Medpro (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Southwood J
• Judgment Date: 19 June 2007
• Docket Number: 90/7136
• Hearing Date: 15 June 2007
• Court: Court of the Commissioner of Patents

Southwood J:

[1]

The applicant enrolled its application for the amendment of patent 90/7136 for hearing immediately after the application in terms of Rule 30 if the applicant was successful in having the third respondent's Notice of Opposition P19 and Statement of Particulars set aside. The applicant's attorney informed the third respondent's attorney that if the applicant was not successful in the Rule 30 application it would remove

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the application for amendment from the roll. Despite being requested by the applicant's attorney to file an answering affidavit the third respondent refus

ed to do so. The third respondent's attorney informed the applicant's attorney that if the court decided the Rule 30 application against the third respondent, the third respondent would immediately apply for leave to intervene in the application for amendment.

[2]

Immediately after the third respondent's Notice of Opposition P19 and Statement of Particulars were set aside, the third respondent's attorney handed to the applicant's attorney an application in which the third respondent seeks leave to intervene in the application to amend patent 90/7136. In the supporting affidavit the third respondent's attorney states that now that the court has determined the procedure to be followed in the application for amendment, the third respondent requests that it be afforded an opportunity to place its opposition to the proposed amendment before the court.

[3]

The third respondent's attorney sets out the following grounds upon which the third respondent wishes to oppose the application for amendment -

(1)

the third respondent disputes the veracity of the purpose for which the applicant seeks the amendment. The third respondent contends that the true purpose is to avoid the consequences of the invalidity of claim 7;

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(2)

the third respondent contends that the applicant was reckless in framing claim 7 and that it was reckless in allowing the claim to remain on the register for almost the entire duration of the patent; and

(3)

the third respondent contends that even if the patent is amended by the deletion of claims 6 and 7 it will continue to be invalid because of obviousness.

The third respondent's attorney does not refer to any evidence to be led on these issues or any witness who can testify. The third respondent's counsel indicated that the third respondent could and would file its answering affidavit within 15 days as required by Rule 6(5)(b)(ii).

[4]

While not opposing the third respondent's application for leave to intervene, the applicant's counsel sought to persuade the court that the third respondent had deliberately failed to file its answering affidavit with a view to delaying the application for amendment and that it would serve no useful purpose to allow the third respondent an opportunity to file an answering affidavit (a) because the third respondent has not disclosed that it has any evidence to lead on the issues and (b) because the grounds of opposition are legally untenable. The applicant's counsel addressed the court at some length on the latter

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issue. The argument was premised on the third respondent seeking an indulgence to file an answering affidavit out of time.

[5]

I cannot agree with this characterization of the third respondent's application. The third respondent's attorney states that the third respondent filed the Notice of Opposition P19 and the Statement of Particulars as required by Regulation 82 on the advice of its patent attorney and senior counsel. Even if I consider that advice to be clearly wrong, as I do, I cannot find that it was the product of studied obtuseness and was mala fide. The third respondent has correctly taken up the attitude that if it is correct in opposing in the manner in which it did, the opposition must be dealt with in accordance with Regulations 82-88 but that if it is held to be wrong, it will oppose in the manner provided for in the Uniform Rules of Court. It is a simple procedural issue.

[6]

It is clear that the third respondent wishes to oppose the application for amendment and followed the wrong procedure. The third respondent must now be permitted to file its opposing affidavit. If there is merit in the applicant's argument that the third respondent's grounds of opposition are legally untenable that will be decided at the hearing in due course. I also consider that the applicant's concern about the delays in obtaining hearings for patent cases is exaggerated. This case was enrolled shortly after the date in April 2007 was found to be unsuitable.

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[7]

The third respondent suggested that the application for amendment be postponed with costs in the cause and that the third respondent be ordered to file its answering affidavit within 15 days of this order. The applicant's counsel suggested inter alia that costs be reserved so that an appropriate order can be made if it is found that the third respondent's...