Microsoft (SA) Proprietary Limited v You First Mobile (Proprietary) Limited (2020/59577) [2021] ZACCP 2; 2021 BIP 5 (CP) (21 June 2021)

Microsoft (SA) Proprietary Limited v You First Mobile (Proprietary) Limited (2020/59577) [2021] ZACCP 2; 2021 BIP 5 (CP) (21 June 2021)

The court found that the plaintiff failed to comply fully with section 43(4)(a) of the Patents Act by not disclosing all foreign search reports or confirming under oath that none exist beyond those provided. The defendant's evidence that a relevant patent application existed in Australia was not refuted. The court held that the plaintiff is compelled to comply with the statutory disclosure requirement. Regarding security for costs, the court exercised its discretion under section 17(2) of the Patents Act, considering the plaintiff's inability to pay adverse costs, the merits of the claim, and the likelihood that the litigation would be brought to an end if security was ordered. The court...

Citation
[2021] ZACCP 2
Parties
Applicant: Microsoft (SA) Proprietary Limited; Respondent: You First Mobile (Proprietary) Limited; Plaintiff: You First Mobile (Proprietary) Limited; Defendant: Microsoft (SA) Proprietary Limited
Court
Court of the Commissioner of Patents
Jurisdiction
South Africa
Judgment Date
21 June 2021
Case Number
2020/59577
Procedural Posture
Interlocutory Application / Application to Compel Compliance With Section 43(4)(a) of the Patents Act and for Security for Costs
Outcome
Application granted. Plaintiff ordered to disclose all foreign search reports and furnish security for costs. Proceedings stayed pending compliance.
Judges
Mokose
Legal Topics
Patent Infringement, Security for Costs, Search Report Disclosure, Revocation of Patent, Novelty, Misrepresentation
Intellectual Property Civil Procedure Patent Infringement Security for Costs Search Report Disclosure Revocation of Patent Novelty Misrepresentation

Case Brief

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Parties

Microsoft (SA) Proprietary Limited

Applicant

You First Mobile (Proprietary) Limited

Respondent

You First Mobile (Proprietary) Limited

Plaintiff

Microsoft (SA) Proprietary Limited

Defendant

Procedural Posture

Interlocutory Application / Application to Compel Compliance With Section 43(4)(a) of the Patents Act and for Security for Costs

Legal Issues

  1. 1 Whether the plaintiff is obliged to disclose all foreign search reports under section 43(4)(a) of the Patents Act.
  2. 2 Whether the plaintiff must furnish security for costs in terms of section 17(2) of the Patents Act or the common law.
  3. 3 Whether the plaintiff's inability to furnish security justifies staying or dismissing the action.

Ratio Decidendi

The court found that the plaintiff failed to comply fully with section 43(4)(a) of the Patents Act by not disclosing all foreign search reports or confirming under oath that none exist beyond those provided. The defendant's evidence that a relevant patent application existed in Australia was not refuted. The court held that the plaintiff is compelled to comply with the statutory disclosure requirement. Regarding security for costs, the court exercised its discretion under section 17(2) of the Patents Act, considering the plaintiff's inability to pay adverse costs, the merits of the claim, and the likelihood that the litigation would be brought to an end if security was ordered. The court...

Court Disposition

Application granted. Plaintiff ordered to disclose all foreign search reports and furnish security for costs. Proceedings stayed pending compliance.

Orders

  • The plaintiff is ordered to supply the defendant 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 as South African Patent 2001/1608.
  • The plaintiff is ordered to furnish security for costs in the sum of R2,000,000 for costs up to and including the first day of trial and R225,000 per day of trial thereafter.