Sanofi Aventis and Others v Cipla Medpro (Pty) Limited and Another (2000/6386) [2009] ZACCP 2; 2009 BIP 1 (CP) (8 December 2009)

Sanofi Aventis and Others v Cipla Medpro (Pty) Limited and Another (2000/6386) [2009] ZACCP 2; 2009 BIP 1 (CP) (8 December 2009)

The court held that the applicants were entitled to bring the amendment application before the court under section 51(9) of the Patents Act, as the institution of interdict proceedings created a 'pending action' sufficient for the purposes of the section. The court found no statutory or judicial authority to restrict the meaning of 'pending' to actions already in progress or at trial. The previous interpretation by Southwood J in Lundbeck A/S v Cipla Medpro was not clearly wrong, and the applicants' procedure was permissible. The amendment to the patent specification was granted, and the interdict application was dismissed. Costs were awarded in favour of the applicants for the amendment...

Citation
[2009] ZACCP 2
Parties
Applicant: Sanofi Aventis; Applicant: Sanofi Aventis South Africa (Pty) Ltd; Applicant: Winthrop Pharmaceutical (Pty) Ltd; Respondent: Cipla Medpro (Pty) Limited; Respondent: Registrar of Patents
Court
Court of the Commissioner of Patents
Jurisdiction
South Africa
Judgment Date
8 December 2009
Case Number
2000/6386
Procedural Posture
Amendment Application / Application for Amendment of Patent Specification and Interdict
Outcome
The amendment to the patent specification is granted; the interdict application is dismissed with costs.
Judges
R D Claassen
Legal Topics
Patent Amendment Procedure, Infringement Interdict, Interpretation of Pending Action, Costs Award
Intellectual Property Patent Amendment Procedure Infringement Interdict Interpretation of Pending Action Costs Award

Case Brief

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Parties

Sanofi Aventis

Applicant

Sanofi Aventis South Africa (Pty) Ltd

Applicant

Winthrop Pharmaceutical (Pty) Ltd

Applicant

Cipla Medpro (Pty) Limited

Respondent

Registrar of Patents

Respondent

Procedural Posture

Amendment Application / Application for Amendment of Patent Specification and Interdict

Legal Issues

  1. 1 Whether the applicants followed the correct procedure for amending the patent specification under the Patents Act.
  2. 2 Whether the simultaneous filing of amendment and interdict applications under one case number is permissible.
  3. 3 Whether the meaning of 'pending' in section 51(9) of the Patents Act allows for the amendment application to be brought in this manner.

Ratio Decidendi

The court held that the applicants were entitled to bring the amendment application before the court under section 51(9) of the Patents Act, as the institution of interdict proceedings created a 'pending action' sufficient for the purposes of the section. The court found no statutory or judicial authority to restrict the meaning of 'pending' to actions already in progress or at trial. The previous interpretation by Southwood J in Lundbeck A/S v Cipla Medpro was not clearly wrong, and the applicants' procedure was permissible. The amendment to the patent specification was granted, and the interdict application was dismissed. Costs were awarded in favour of the applicants for the amendment...

Court Disposition

The amendment to the patent specification is granted; the interdict application is dismissed with costs.

Orders

  • The complete specification of South African Patent 2000/6386 is amended by deletion of Example 1A as indicated in the annexures to the notice of motion.
  • The interdict application is dismissed with costs.