SOUTH AFRICA Law and Practice Contributed by: Russell Bagnall, Danie Dohmen, Sophia Smallbones and Ramon Pereira, Adams & Adams Attorneys
ceedings being brought after grant but before the nine-month period has expired. The grant of a Marketing Authorisation (MA) or activities relating to obtaining regulatory approval (other than stockpiling) are not considered to be acts of infringement. There is also no patent link - age system with the MA authority in South Africa. Preliminary injunction proceedings are com - menced by service on the respondents at their place of business and the time periods are cal - culated from the date of service. The applica - tion is accompanied by founding evidence in the form of one or more declarations. Urgent service usually takes one to three days. The respondent is required to file a notice of intention to oppose and, thereafter, file answering evidence. The applicants have the opportunity to file replying evidence in response to the answering evidence. The respondents are given 15 days from the fil - ing of the notice of intention to oppose to file their evidence and the patentee is required to reply within ten days. Often these timelines are extended by agreement between the parties. The presiding judge considers the question of infringement and validity and the prospects of the patentee succeeding on these issues at trial. If the court is of the view that the patentee has strong prospects of succeeding at trial, then oth - er factors, such as the balance of convenience, need not necessarily weigh heavily in favour of the applicant. However, if the court finds that the strength of the case is prima facie established but open to some doubt, factors such as the balance of convenience would need to favour the patentee more heavily. It is common practice for the applicant to pro - vide an undertaking that it will pay any damages
to the respondent that it proves to have suffered because of the injunction being wrongly granted. This assists in arguing that the balance of con - venience favours the applicant. In some cases, the respondent will provide a cross-undertaking. Demands from respondents to provide bonds for security for legal costs (for foreign applicants who hold no fixed assets in South Africa) are not uncommon. Security for costs can be effectively provided with limited risk for applicants. 1.4 Structure of Main Proceedings on Infringement/Validity Infringement and validity proceedings are not bifurcated. A defendant is entitled to raise inva - lidity by way of defence or by way of a counter - claim in an infringement action. It is possible to bring a revocation application post grant, but no opposition proceedings are available before or after grant. 1.5 Timing for Main Proceedings on Infringement/Validity A claim for damages prescribes three years from when prescription starts to run. The issuing of summons interrupts prescription. In practical terms, what this means is that, once success - ful in an infringement action, it is permissible to claim damages for sales that took place up to three years before a summons was instituted. An infringement action is commenced by issuing of a summons accompanied by a particulars of claim through the court whereafter the issued summons is physically served through the Sher - iff of the Court (usually at the defendant’s main place of business or registered address). All rel - evant time periods are calculated from the date of service.
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