Some views from the South African Constitutional Court on patent revocation and infringement matters: Ascendis Animal Health (Pty) Ltd v Merck Sharp Dohme Corporation and Others 2020 (1) SA 327 (CC)

Published date10 December 2021
Date10 December 2021
AuthorDu Bois, M.
Citation(2021) IPLJ 1
SA 327 (CC)
 
Associate Professo r in Intellectual Property Law, Unive rsity of South Africa
In South Afr ican law, the substantive requ irements for a patent may be s crutinised du ring
infri ngement proceedin gs or revocation proceed ings. Lack of novelty (or anticipat ion)
is a ground for revoca tion of a patent but can also serve as a defen se in an infringeme nt
matter. Afte r a series of decisions by the Com missioner of Patents and t he Supreme Court
of Appeal on inf ringement and revoca tion matters relat ing to Merck’s Patent 98/10975
and its alleged in fringement by Cipla (now Ascend is), the Constitutional Cou rt was asked
to deliberate t he matter in Ascendis Ani mal Health (Pty) Limited v Merck Shar p Dohme
Corporation and Others 2020 (1) SA 327 (CC). The main issue related to th e principle of
res judicata, and whether inva lidity of a patent may be con sidered as a defense dur ing
infri ngement matters af ter the validity of t he patent was alrea dy determined d uring
revocation proce edings between the sa me parties. The decision s also considered whether
each revocation g round constituted a se parate issue or whether revo cation is the issue for
purposes of de termining whether a m atter is res judicata. A review of all the preced ing
decisions also in dicate that the Supre me Court of Appeal may have de veloped the way
in which lack of novelty is det ermined in So uth African law, but withou t explicitly
acknowledgin g that the approach is d ifferent. The Const itutional Cour t’s evenly split
decisions (pe r Khampepe J and Ca meron J) indicat e different approach es to reaching
just and fair out comes in patent matters. W hile Khampepe J’s decision focuse s more on
the need to remove inva lid patents from th e register, Cameron J’s decision focu ses on
preventing ha rm from piecemeal litig ation.
KEYWORDS: patent s; patent law; patent revocat ion; invalid patent; novelt y; anticipation;
         
Animal Healt h; Merck Sharp Dohme; res judicata; piece meal litigation
* Associate Profe ssor, University of South Afr ica, LLB LLD (Stellenbosch Univer sity) dboism@, ORCiD: 0000-0001-9171-8760.
(2021) IPLJ 1
© Juta and Company (Pty) Ltd
  
The Constitutional C ourt’s deliberation in Ascendis Animal Health (Pt y)
Limited v Merck Sharp Dohme Cor poration1   
Constitutional Cou rt dealing with a patent case and it gives some ind ication of
the impact of the Constit ution2 on intellectual pro perty in genera l, and on patent
rights in par ticular. There are views that the cas e is rather straightforwa rd3
and that the decisions have no practical i mplications on the outcome of the
case,4      
justices on e ither side.
However, some attention is warranted on the ca se’s implications for patent
and now only one Constitutional Cou rt case. As with many Const itutional
               
(only) the outcome of the case that merits attention, but t he general approach
in applying constitut ional principles that matter s. This analysis will set out
the cases precedi ng the Constitutional Court’s decisions in detail and provide
some background on the mat ter, discuss the Constitutional C ourt decisions,
and conclude with a few comments on the pe rtinent issues. The backg round
surroundi ng the matter is part icularly important, si nce much of the entire
muddle could likely have been avoided had the appropriate pr ocedures been
  
  Ascendis Animal He alth (Pty)
Limited v Merck Sha rp Dohme Corporation and Oth ers 2020 (1)
SA 327 (CC)
2.1 Cipla Agrimed (P ty) Ltd v Merck Sharp Dohme Group and Another
2014 BIP 27 (CP): The decision on the revocation issue by the
Commissioner of Patents
     
heard by Teffo J sitting as the Commissioner of Patents in Cipla Agr imed (Pty)
1 2020 (1) SA 327 (CC). The analysis in this pap er was discussed with fellow int ellectual
propert y law scholars during a mee ting of the Intellectu al Property Law Rea ding Group hosted
by the University of So uth Africa. Than k you to Prof Coen Visser, Prof A ndries van der Mer we
and Mr Richa rd Shay for input on some of the idea s. This analysis is b ased on prelimin ary
research und ertaken du ring Research a nd Development Leave gr anted by the Univer sity of South
Africa fr om May 2017 to January 2018.
2 The Const itution of the Republic of South A frica, 1996.
3 See H Muhlbe rg ‘A five-all draw’ (2019) 19(11) Without Prejudice 19 providing some tongue-in-
cheek comment s on the nature of the cas e: ‘Reading it, you might thi nk, “Gosh this th ing’s jolly
complicated”, althou gh by page three it’s possible th at you might be using words ot her than gosh
and jolly. But actual ly it’s quite straightfor ward; it’s all about the “It’s already b een decided,
dud e” legal princ iple, res judicata as t he good people of Rome called it.’ See also Sp oor & Fisher
‘Patents in the h ighest court’ 2 De cember 2019, available at https://ww News/
south-afr ica-patents-in-t he-highest-cou rt/ (accessed on 14 June 2021).
4 B Shozi & YA Vawda ‘Quo vadis pate nt litigation: Asce ndis Animal Health (P ty) Limited v Merck
Sharpe Dohme Corporation 2020 1 SA 327 (CC) – In search of th e bigger picture on pat ent
validity’ (2021) 24(1) PER/ PELJ 1–14 at 2.
2 South African Intellectual Property Law Journal (2021) 9
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