SCA Unimpressed by Lack of Inventiveness

The South African Supreme Court of Appeal (SCA) recently handed down two decisions in a row invalidating patents for lack of inventiveness.

In the first of the two decisions (Buckman Laboratories v Bromine Compounds (2008) ZASCA 37), the SCA relied on evidence from an expert for the defendant that performing the alleged inventive step of the patent was merely common sense. No reason was suggested why it was not common sense to carry out the alleged inventive step. The court consequently concluded that the alleged invention was obvious.

An unusual aspect of the Buckman case was that the patentee did not call an expert to give any evidence; notwithstanding that the inventor was available to testify, and a summary of the expert evidence that the inventor would give had been filed with the court. There was therefore no evidence from the patentee before the court on any of the claims of the patent.

In the second of the two decisions (Northpark Trading v Ausplow (2008) ZASCA 46), the SCA did not rely on any expert evidence at all. The court held that although expert evidence might be necessary in some cases – at least to educate a court in the technology involved – this would not always be so. In this case the court held that there was really no need to go beyond the primary dictionary meaning of obvious: which was “very plain”.

In the Northpark Trading case the patent specification was silent as to any benefits that would be achieved by the allegedly inventive feature of the invention. A reason as to why the allegedly inventive feature was inventive was, however, given by counsel in argument before the court. In response, the court stated that if the reason given was the reason why the inventor considered the feature to be inventive, it was remarkable that no reference was made to that reason when describing the background to, and the object of, the invention. The allegedly inventive feature was found to be immaterial in achieving the claimed object of the invention. The court concluded that reliance on the feature as constituting an inventive step, was merely an opportunistic exploitation of the absence of the feature from a description in a prior art document in which all the other features of the alleged invention were described.

In the Northpark Trading decision, the court only considered the validity of claim 1. In the Buckman Laboratories decision the court only considered the validity of claims 1 and 14, notwithstanding that certain other claims were alleged to be infringed. Consequently, in both decisions the court only provisionally revoked the patents. The patentees were given a period of one month within which to apply to amend their patents, failing which the provisional orders revoking the patents were to become fully operational. The court further ordered that if applications to amend the patents were made timeously and were not withdrawn, it would be decided at the hearing of these applications whether or not the revocation orders should become fully operational.

The reason given by the court in the Buckman Laboratories case for not considering the validity of the dependent claims was that consideration of their validity may be an academic exercise on which the court did not wish to embark.

These two Supreme Court of Appeal decisions should serve as a warning to patentees to ensure that the independent claims of their patents are not only novel, but also inventive, before opting to litigate. This is especially important since a patentee is not entitled to relief if any of the claims of the patent are invalid, until the patent has been amended to remove the invalid claims.

Hugh Moubray
Spoor & Fisher

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