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)

• Pages: 1-17
• Published date: 10 December 2021
• Date: 10 December 2021
• DOI: https://doi.org/10.47348/SAIPL/v9/a1
• Author: Du Bois, M.
• Citation: (2021) IPLJ 1

https://doi.org/10.47348/SAIPL/v9/a1

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)

∗

Associate Professo r in Intellectual Property Law, Unive rsity of South Africa

ABSTRACT

In South Afr ican law, the substantive requ irements for a patent may be s crutinised du ring

infringement proceedings or revocation proceedings. Lack of novelty (or anticipation)

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 infringement and revocation matters relating 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 Others2020 (1) SA 327 (CC). The main issue related to th e principle of

res judicata, and whether invalidity of a patent may be considered as a defense dur ing

infringement matters after the validity of the patent was already determined during

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 indicate that the Supreme Court of Appeal may have developed the way

in which lack of novelty is determined in South African law, but without explicitly

acknowledging that the approach is different. The Constitutional Court’s evenly split

decisions (per Khampepe J and Cameron J) indicate different approaches to reaching

just and fair out comes in patent matters. W hile Khampepe J’s decision focuse s more on

the need to remove invalid patents from the register, Cameron J’s decision focuses 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@

unisa.ac.za, ORCiD: 0000-0001-9171-8760.

1

(2021) IPLJ 1

© Juta and Company (Pty) Ltd

https://doi.org/10.47348/SAIPLJ/v9/a1

 

The Constitutional Court’s deliberation in Ascendis Animal Health (Pty)

Limited v Merck Sharp Dohme Corporation1

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 particular. There are views that the case is rather straightforward3

and that the decisions have no practical implications on the outcome of the

case,4

justices on e ither side.

However, some attention is warranted on the case’s implications for patent



and now only one Constitutional Court case. As with many Constitutional

               

(only) the outcome of the case that merits attention, but the general approach

in applying constitutional principles that matters. This analysis will set out

the cases precedi ng the Constitutional Court’s decisions in detail and provide

some background on the matter, discuss the Constitutional Court decisions,

and conclude with a few comments on the pertinent issues. The background

surrounding the matter is particularly important, since much of the entire

muddle could likely have been avoided had the appropriate procedures 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 Richard Shay for input on some of the ideas. This analysis is based on preliminary

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 actually it’s quite straightforward; it’s all about the “It’s already been decided,

dude” legal princ iple, res judicata as t he good people of Rome called it.’ See also Sp oor & Fisher

‘Patents in the highest court’ 2 December 2019, available at https://ww w.spoor.com/en/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 Corporation2020 1 SA 327 (CC) – In search of the bigger picture on patent

validity’ (2021) 24(1) PER/ PELJ 1–14 at 2.

2 South African Intellectual Property Law Journal (2021) 9

© Juta and Company (Pty) Ltd