Ciplaagrimed (Pty) Ltd v Merck Sharp Dohme Group and Another (1998/10975) [2014] ZAGPPHC 96 (11 March 2014)

Ciplaagrimed (Pty) Ltd v Merck Sharp Dohme Group and Another (1998/10975) [2014] ZAGPPHC 96 (11 March 2014)

After comparing the 1992 and 1998 patent specifications, the court found that the 1992 patent describes the essential integers of the formulation claimed in the 1998 patent. The combination of hydrogenated castor oil, a parasiticide, and a hydrophobic carrier consisting of triacetin and acetylated monoglycerides is expressly disclosed in the prior art. The court rejected the respondents' argument that the 1992 patent did not teach the specific combinations, finding that the prior specification listed the relevant carriers and combinations. The court held that claims 1 to 29 of the 1998 patent are anticipated by the 1992 patent and thus lack novelty and inventive step as required by...

Citation
[2014] ZAGPPHC 96
Parties
Applicant: Cipla Agrimed (Pty) Ltd; Respondent: Merck Sharp Dohme Group; Respondent: Merial LLC
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
11 March 2014
Case Number
1998/10975
Procedural Posture
Revocation Application / Judgment
Outcome
Application for revocation of the 1998 patent succeeds; claims 1 to 29 are invalid and revoked.
Judges
Teffo
Legal Topics
Patent Revocation, Novelty, Inventive Step, Anticipation, Expert Evidence, Interpretation of Claims
Intellectual Property Patent Revocation Novelty Inventive Step Anticipation Expert Evidence Interpretation of Claims

Case Brief

Summary, issues, holding and outcome

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Parties

Cipla Agrimed (Pty) Ltd

Applicant

Merck Sharp Dohme Group

Respondent

Merial LLC

Respondent

Procedural Posture

Revocation Application / Judgment

Legal Issues

  1. 1 Whether claims 1 to 29 of the 1998 patent are anticipated by the 1992 patent and thus lack novelty.
  2. 2 Whether the invention claimed in the 1998 patent involves an inventive step as required by section 25 of the Patents Act.
  3. 3 Whether the combination of hydrophobic carriers in claim 1 of the 1998 patent is disclosed in the prior art.

Ratio Decidendi

After comparing the 1992 and 1998 patent specifications, the court found that the 1992 patent describes the essential integers of the formulation claimed in the 1998 patent. The combination of hydrogenated castor oil, a parasiticide, and a hydrophobic carrier consisting of triacetin and acetylated monoglycerides is expressly disclosed in the prior art. The court rejected the respondents' argument that the 1992 patent did not teach the specific combinations, finding that the prior specification listed the relevant carriers and combinations. The court held that claims 1 to 29 of the 1998 patent are anticipated by the 1992 patent and thus lack novelty and inventive step as required by...

Court Disposition

Application for revocation of the 1998 patent succeeds; claims 1 to 29 are invalid and revoked.

Orders

  • The application succeeds with costs, including the costs of two counsels.