Precismeca Ltd v Melco Mining Supplies (Pty) Ltd (395/2001) [2002] ZASCA 119; 2003 (1) SA 664 (SCA) (25 September 2002)

Precismeca Ltd v Melco Mining Supplies (Pty) Ltd (395/2001) [2002] ZASCA 119; 2003 (1) SA 664 (SCA) (25 September 2002)

The Supreme Court of Appeal held that the agreement between Precismeca and Melco was not a patent licensing agreement under the Patents Act, but rather a common law technology licensing agreement. The references to patents in the agreement merely described the product and did not create statutory rights or obligations under the Patents Act. The absence of attached patent schedules and the fact that the parties performed under the agreement for over 20 years further indicated that the contract was not intended to be a patent licensing agreement. Clause 3.5 of the agreement was decisive, as it provided that the agreement itself would operate as a licence in respect of the patents applied...

Citation
[2002] ZASCA 119
Parties
Appellant: Precismeca Limited; Respondent: Melco Mining Supplies (Pty) Limited
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
25 September 2002
Case Number
395/2001
Procedural Posture
Civil Appeal / Appeal From High Court Special Plea Decision
Outcome
Appeal upheld; order of the high court set aside.
Judges
C H Lewis, Hefer, Navsa, Nugent, Jones
Legal Topics
Common Law Licensing Agreement, Patents Act Jurisdiction, Statement and Debatement of Account, Royalty Payment, Contractual Interpretation
Commercial and Corporate Civil Procedure Common Law Licensing Agreement Patents Act Jurisdiction Statement and Debatement of Account Royalty Payment Contractual Interpretation

Case Brief

Summary, issues, holding and outcome

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Parties

Precismeca Limited

Appellant

Melco Mining Supplies (Pty) Limited

Respondent

Procedural Posture

Civil Appeal / Appeal From High Court Special Plea Decision

Legal Issues

  1. 1 Whether the jurisdiction of the high court to determine rights under a common law licensing agreement is ousted by section 18(1) of the Patents Act.
  2. 2 Whether the remedies sought by the appellant depend on the validity of patents and thus fall within the exclusive jurisdiction of the Commissioner of Patents.
  3. 3 Whether the agreement in question constitutes a patent licensing agreement or a common law technology licensing agreement.

Ratio Decidendi

The Supreme Court of Appeal held that the agreement between Precismeca and Melco was not a patent licensing agreement under the Patents Act, but rather a common law technology licensing agreement. The references to patents in the agreement merely described the product and did not create statutory rights or obligations under the Patents Act. The absence of attached patent schedules and the fact that the parties performed under the agreement for over 20 years further indicated that the contract was not intended to be a patent licensing agreement. Clause 3.5 of the agreement was decisive, as it provided that the agreement itself would operate as a licence in respect of the patents applied...

Court Disposition

Appeal upheld; order of the high court set aside.

Orders

  • The appeal succeeds with costs, including those of two counsel.
  • The order of the high court upholding the respondent's special plea is set aside.