Merck Sharpe Dohme Group v Cipla Agrimed (Pty) Ltd (20282/2014) [2015] ZASCA 175; 2016 (3) SA 22 (SCA); 2015 BIP 101 (SCA) (27 November 2015)

Merck Sharpe Dohme Group v Cipla Agrimed (Pty) Ltd (20282/2014) [2015] ZASCA 175; 2016 (3) SA 22 (SCA); 2015 BIP 101 (SCA) (27 November 2015)

The Supreme Court of Appeal held that the 92 patent did not anticipate the claims of the 98 patent. The prior art disclosed only Triacetin as a preferred hydrophobic carrier and did not provide an individualised description or enablement of the specific combinations of hydrophobic carriers claimed in the 98 patent. The skilled person, armed only with the 92 patent, would not be able to arrive at the claimed invention without significant ingenuity and experimentation. The 98 patent represented a substantial technical advance, providing prolonged duration of activity and other advantages not taught by the prior art. The court confirmed that selection patents are not a special category and...

Citation
[2015] ZASCA 175
Parties
Appellant: Merck Sharpe Dohme Group; Appellant: Merial LLC; Respondent: Cipla Agrimed (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
27 November 2015
Case Number
20282/2014
Procedural Posture
Civil Appeal / Appeal From the Court of the Commissioner of Patents
Outcome
Appeal upheld; revocation application dismissed; patent certified as valid.
Judges
Ponnan, Theron, Wallis, Petse, Willis
Legal Topics
Patent Novelty, Anticipation, Enablement, Selection Patents, Patents Act 1978, Revocation of Patent
Intellectual Property Patent Novelty Anticipation Enablement Selection Patents Patents Act 1978 Revocation of Patent

Case Brief

Summary, issues, holding and outcome

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Parties

Merck Sharpe Dohme Group

Appellant

Merial LLC

Appellant

Cipla Agrimed (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal From the Court of the Commissioner of Patents

Legal Issues

  1. 1 Whether the claims of South African Patent Number 1998/10975 are anticipated by the disclosure in the prior art (the 92 patent).
  2. 2 Whether the prior art provides sufficient disclosure and enablement to invalidate the 98 patent for lack of novelty.
  3. 3 Whether the 98 patent constitutes a valid selection patent under South African law.

Ratio Decidendi

The Supreme Court of Appeal held that the 92 patent did not anticipate the claims of the 98 patent. The prior art disclosed only Triacetin as a preferred hydrophobic carrier and did not provide an individualised description or enablement of the specific combinations of hydrophobic carriers claimed in the 98 patent. The skilled person, armed only with the 92 patent, would not be able to arrive at the claimed invention without significant ingenuity and experimentation. The 98 patent represented a substantial technical advance, providing prolonged duration of activity and other advantages not taught by the prior art. The court confirmed that selection patents are not a special category and...

Court Disposition

Appeal upheld; revocation application dismissed; patent certified as valid.

Orders

  • The appeal is upheld with costs, including the costs of two counsel.
  • The application for revocation of South African Patent Number 1998/10975 is dismissed.