Most Read Contributor in South Africa, September 2016
With all corners of the globe feeling the squeeze as a result of
the international economic crisis, it would be an understatement to
say that the heat is definitely on for companies in the technology
sphere to get the edge on their competitors. They are doing
this by investing vast amounts of money and resources in research
and development in the hopes of coming up with the next big
thing. In those instances where commercially viable
technological advancements do result from such investment,
companies are making sure that the fruits of their labour do not
fall into the clutches of unscrupulous competitors. One way
of keeping competitors at bay is by means of patent
registrations. Where once it may have been the exception to
the rule to follow the patenting route, the current trend appears
to convey the opposite. Globally, industry players invest
substantial sums of money in protecting their intellectual property
and this includes defending that intellectual property against
The exact scope of protection that a patentee is entitled to is
determined by the patent specification itself.
Specifically, the function of a patent specification is to clearly
and precisely define the scope of the invention in order that
others are made aware of the boundaries of the area within which
they may not trespass. Where a patentee alleges infringement
of his patent rights by a third party, it must be established the
allegedly infringing article or process falls within the scope of
the claims of the patent specification. Where this cannot be
established, there can be no finding of patent infringement.
All things being even, patent litigation is a very costly exercise
for both parties, irrespective of the outcome. And for the
loser, the cost of being caught on the wrong side of the boundary
is potentially crippling in the form of damages liability and loss
of investment into a product or process that can no longer be
commercialised. In order to mitigate the risks associated
with third party patent rights infringement, industry is getting
proactive. Globally, ever more frequently companies are going
the route of conducting freedom to operate searches in order to
establish the lie of the land prior to expending huge amounts of
money on R&D and potentially facing lawsuits.
In fact, this level of proactivity may have reached new heights,
if the recent South African judgement handed down by the Supreme
Court of Appeal in Camworth Technologies Ltd v Videx Wire Products
(Pty) Ltd (17 September 2013) is anything to go by. The
judgement was handed down in an appeal from the South African Court
of the Commissioner of Patents where the respondent (Videx) had
applied to the Commissioner for a declaration of non-infringement
in terms of section 69(1) of the Patents Act 57 1978. Section
69(1) of the Act provides:
A declaration that the use by any person of any process, or the
making or use or offer to dispose or disposal or importation of any
article by any person, does not or would not constitute an
infringement of a patent, may be made by the commissioner in
proceedings between that person and the patentee, notwithstanding
that no assertion to the contrary has been made by the patentee, if
it is proved –
(a) that such person has applied in writing to the patentee
for a written acknowledgement to the effect of the
declaration claimed, and has furnished the patentee with full
particulars of the process or article in question; and
(b) that the patentee has failed to give such an
In the matter before the Commissioner, Videx had sought a
declaration that a pre-stressing device for use in ("the Videx
pot") did not infringe the claims of a patent held by the
appellant (Camworth). What was not in issue between the
parties was that the procedural requirements of section 69(1) were
complied with. The question before the court was whether the
Videx pot fell with the scope of Camworth's patent. The
Commissioner held that the Videx pot did not infringe the patent
because it did not include two of the essential integers thereof.
Accordingly, the Commission issued a declaration of
non-infringement and it was against this finding that the patentee
appealed. On a comparison between the Videx pot and the
wording of the patent claims off the back of the expert evidence
presented, the SCA agreed with the lower court's decision and
dismissed the appeal with costs. The declaration of
non-infringement was endorsed and Videx is can manufacture and
dispose of the Videx pot in the Republic of South
Many companies are content to operate based on the findings of
various patent investigations carried out at their behest, and it
certainly isn't usual practice to go the extra mile of a 69(1)
declaration. What cannot be denied is that the extra mile
bought Videx some comfort.
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