Most Read Contributor in South Africa, September 2016
Expert witnesses are often called in patent infringement matters
to present evidence to the court on technical issues and the merits
of the invention covered by the patent. The selection of technical
experts in patent disputes is an issue where South African courts
have given guidance in the past on the criteria that they apply in
making an assessment as to whether the witness is indeed an expert
in the field of technology covered by the patent.
This issue came to the fore again in the judgement issued by the
South African Supreme Court of Appeal in the matter of I O Tech
Manufacturing (Pty) Ltd v Gallagher Group Ltd (872/12)  SASCA
180 (29 November 2013).
There is nothing particularly exciting about the judgement that
was handed down in this matter, as it didn't establish new law.
What is interesting though is that in dealing with a patent
infringement matter the Court had to consider the evidence that was
provided by an expert witness. The technology in question was not
particularly challenging for someone schooled in the fields of
electronics or electrical engineering. That having been said, the
Court rejected the evidence led by the expert even though he was a
qualified electrical engineer. The Court didn't consider his
evidence of any particular value as he had not established himself
as an expert in the field of technology covered by the patent.
As it turns out, the decision of the Court didn't turn on
this issue and the patent was held not to be infringed. However,
the judgement does provide a useful reminder that the selection of
appropriately qualified and skilled expert witnesses in any patent
dispute requires careful attention to the criteria that our courts
apply in acknowledging a witness's expertise. Having someone
that is generally qualified in a field of engineering is not
sufficient to constitute an expert witness – they should also
show particular expertise in the specific field of technology
covered by the patent.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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