Monday 15 February 2010

Darren Olivier

Interdict pends “pending” decision

In Sanofi v Cipla Medpro (Court of the Commissioner of Patents) Claassen was called on to decide an issue around the fact that the Applicants did not use the procedures set out in Section 51(1) of the Patents Act but issued the interdict proceedings to create a "pending action", as provided for in Section 51(9), to enable them to issue the amendment application subject to that "pending action". It's convoluted but the meaning of the word "pending" in the section was crucial to Claassen’s consideration, and the reason for its importance is explained in paras 3-5 of the decision summarised as:

“Respondent objects to this procedure because it is by-passing the provisions of Section 51(1), which specifically provide a very special procedure to obtain an amendment. This procedure differs radically from the normal Court proceedings. The regulations prescribe a procedure that actually puts the objector (Respondent in casu) in the position of a Plaintiff having to file full particulars of claim in respect of its objection. The Applicant then becomes the "Defendant' having to plead to the particulars of claim. The objector gets another bite at the cherry by way of replication. The objection is therefore based on the fact that the Applicant is in effect now bringing an amendment "on an urgent or expedited" manner where no such urgent or expedited procedure is provided for in the Act or the Regulations. He is also prejudiced, in submission, in not being able to "reply" to the relief sought (i.e. its objection). The further objection is that this procedure cannot be followed because one cannot get any relief on an invalid patent. Therefore until the patent is amended, there can be no question of infringement. On that basis it is submitted that the interdict procedure was totally wrong (i.e. "abuse" of the process, but not in a pejorative sense). “

In Lundbeck Southwood had found that there is "nothing in the ordinary sense of the word "pending" that prohibits this procedure". He decided that once a procedure is issued it is pending, regardless of when it is to be finalised or comes before Court. Claassen was being asked by the Respondents to find that Southwood J was "clearly wrong" or that he was "convinced' that he was wrong, but he could not - see “para 8”. By agreement between the parties then, Claassen allowed the amendment and dismissed the interdict application.

Darren Olivier

Darren Olivier

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26 February 2010 at 08:50 delete

Leave to appeal this decision to the SCA has been granted.