SmithKline Beecham plc and Another v Sandoz AG and Another (96/3472) [2010] ZACCP 3; 2010 BIP 25 (CP) (14 April 2010)

SmithKline Beecham plc and Another v Sandoz AG and Another (96/3472) [2010] ZACCP 3; 2010 BIP 25 (CP) (14 April 2010)

The court found that the applicants had satisfied the statutory requirements for amendment under the Patents Act. The amendments did not introduce new matter or claims not fairly based on the original specification, nor did they broaden the scope of the claims beyond what was permitted by section 51(7). The phrase 'about 7:1' was interpreted in light of the specification and industry practice, and did not result in impermissible broadening. The court accepted the expertise of the applicants' witness, who had substantial experience in the relevant field, over the respondents' witness, who lacked relevant experience at the priority date. The applicants provided full reasons for the...

Citation
[2010] ZACCP 3
Parties
Applicant: SmithKline Beecham plc; Applicant: SmithKline Beecham Corporation; Respondent: Sandoz AG; Respondent: Novartis SA (Pty) Ltd
Court
Court of the Commissioner of Patents
Jurisdiction
South Africa
Judgment Date
14 April 2010
Case Number
96/3472
Procedural Posture
Amendment Application / Application for Amendment of Patent Claims Opposed by Respondents
Outcome
Application to amend South African Patent no. 96/3472 granted. Each party to pay its own costs.
Judges
Molopa-Sethosa
Legal Topics
Patent Amendment, Inventive Step, Novelty, Scope of Claims, Onus of Proof, Revocation Proceedings
Intellectual Property Patent Amendment Inventive Step Novelty Scope of Claims Onus of Proof Revocation Proceedings

Case Brief

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Parties

SmithKline Beecham plc

Applicant

SmithKline Beecham Corporation

Applicant

Sandoz AG

Respondent

Novartis SA (Pty) Ltd

Respondent

Procedural Posture

Amendment Application / Application for Amendment of Patent Claims Opposed by Respondents

Legal Issues

  1. 1 Whether the proposed amendment to South African Patent no. 96/3472 complies with the statutory requirements under the Patents Act.
  2. 2 Whether the amended claims introduce new matter or claims not fairly based on the original specification.
  3. 3 Whether the amended claims are wholly within the scope of the claims before amendment as required by section 51(7) of the Patents Act.

Ratio Decidendi

The court found that the applicants had satisfied the statutory requirements for amendment under the Patents Act. The amendments did not introduce new matter or claims not fairly based on the original specification, nor did they broaden the scope of the claims beyond what was permitted by section 51(7). The phrase 'about 7:1' was interpreted in light of the specification and industry practice, and did not result in impermissible broadening. The court accepted the expertise of the applicants' witness, who had substantial experience in the relevant field, over the respondents' witness, who lacked relevant experience at the priority date. The applicants provided full reasons for the...

Court Disposition

Application to amend South African Patent no. 96/3472 granted. Each party to pay its own costs.

Orders

  • The application to amend South African Patent no. 96/3472, as set out in annexure 'ACC2' of the founding papers, is granted.
  • Each party is ordered to pay its own costs.