Microsoft (SA) (Proprietary) Limited v You First Mobile (Proprietary) Limited
| Jurisdiction | http://justis.com/jurisdiction/166,South Africa |
| Judge | Mokose J |
| Judgment Date | 15 June 2021 |
| Court | Commissioner of Patents |
| Hearing Date | 15 February 2021 |
| Docket Number | 2020/59577 |
Mokose J:
In the main action to which this interlocutory matter relates, the respondent instituted an action against the applicant in which the respondent sought an interdict prohibiting the applicant from infringing a South African Patent No. 2001/1608 as well as claiming damages. For the purposes of this judgment, I shall refer to the applicant in the interlocutory matter as the defendant and the respondent as the plaintiff.
It is common cause between the parties that the plaintiff applied for registration of the patent in the United States of America ("USA") on or about 31 January 2001. After the patent in the USA had been lodged, the plaintiff applied for the registration of the patent in South Africa which was duly granted on 24 April 2002. The patent in the USA was only granted on 28 September 2004. On or about 20 July 2015 the patent registered in South Africa was amended so as to bring it in line with that registered in the USA. The plaintiff instituted infringement litigation in the USA against Apple and Sony wherein a settlement agreement was concluded.
On 12 July 2019 the defendant lodged its request in terms of Section 43(4)(a) of the Patents Act 57 of 1978 ("the Patents Act"). The plaintiff initially refused to comply on the basis that "in terms of a settlement agreement" it was unable to "provide….. assistance with respect to any patent applications relating to data vending system invention outside of South Africa."
2021 JDR 1330 p3
Mokose J
On 30 September 2019 the defendant served and filed its plea and counterclaim against the plaintiff's claim. In the counterclaim the defendant sought, inter alia, an order revoking the plaintiff's patent.
This application before me today, was launched by the defendant on 10 February 2020 to compel the plaintiff to comply with the request in terms of Section 43(4)(a) of the Patents Act and to seek an order that the plaintiff set security for costs in terms of Section 17(2) of the act, alternatively, in terms of the common law.
In June 2020 the plaintiff disclosed the details of search reports issued in the USA in respect of the application for a patent filed in that country but did not disclose search reports issued in any other country in respect of the invention of the patent. The defendant alleges that it has located at least one other patent application filed for the same invention in another examining country, Australia, which search report should also have been disclosed. The defendant further contends that should there be no other reports issued other than that disclosed, it should be stated on oath that no search reports have been issued outside of the United States of America and Australia.
The plaintiff has refused to do so on the grounds that it has complied with the request. The plaintiff submits that on 12 June 2020 it transmitted an email to the defendant in which it tendered all documentation as requested. The plaintiff submits further that only upon receipt of the replying affidavit did it realise that the defendant sought further documentation whereupon it sent an email to the defendant referring them to the portal where all the patent documentation could be found.
2021 JDR 1330 p4
Mokose J
The defendant seeks an order compelling the plaintiff to comply with the defendant's request in terms of the provisions of Section 43(4)(a) of the Patents Act.
Section 43(4) provides as follows:
"(4)(a) After the expiry of five years following the date of application for a patent, any person may apply to the registrar for the patentee to supply the applicant with the prescribed particulars of any search report issued in another country in respect of an application for a patent relating to the same subject matter which has been lodged in that country.
(b) On receipt of the application, the registrar shall forward a copy thereof to the patentee at the patentee's address for service.
(c) If the patentee fails to comply with the application within three months of receipt of the copy of the application at the patentee's address for service, the applicant may apply to the commissioner for an order requiring compliance with the application."
Section 43(4)(a) of the Patent Act requires a South African patentee to disclose search reports issued in foreign jurisdictions in respect of the same invention to third parties on request. The provision serves an important purpose because it allows interested parties to assess the validity of a South Africa patent without necessarily having to incur the costs of procuring their own search report. This provision therefore assists third parties in seeking the revocation of a patent if it is appropriate to do so.
Search reports are issued by patent examiners employed in those foreign jurisdictions that carry out substantive examination of patents before they are granted. The reports list the documents
2021 JDR 1330 p5
Mokose J
that the examiner has located through a search of earlier patents and publications known as prior art relevant to the patent and the patent examiner will generally categorise and rank the documents identified by relevance.
South Africa does not carry out its own search reports or examine the validity of a patent before it is granted. Therefore, this means that a patent in South Africa is not a guarantee that the patent is valid and enforceable. The enforceability of a patent is only determined when it is contested in a court of law.
On 12 July 2019 the defendant filed its application in terms of Section 43(4)(a) at the office of the Registrar of Patents. The plaintiff refused to comply as stated above. The defendant is of the view that such a refusal was ill-conceived as search reports are public documents. Six months later the plaintiff disclosed details of search reports issued in the USA in respect of the application for the patent filed in that country. The defendant contends that the plaintiff has not disclosed search reports issued in other...
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