SOUTH AFRICA Law and Practice Contributed by: Russell Bagnall, Danie Dohmen, Sophia Smallbones and Ramon Pereira, Adams & Adams Attorneys
1.13 Use of Experiments Experimental evidence may be adduced and is often relied on, especially for proving infringe - ment. The normal evidentiary rules apply. A chain of custody should be established when reliance is placed on the analysis of infringing samples. 1.14 Discovery/Disclosure Any party may be required to make discovery on oath of all documents and tape recordings relating to any matter in question, once plead - ings have closed. The party required to make discovery files a discovery affidavit specifying documents and tape recordings in its possession and identifies those documents and tape recordings it objects to produce. There is no discovery by way of deposition. However, it is possible to make provision for a party to compel further or better discovery in circumstances in which the discovery is consid - ered inadequate. A party is required to discover and make avail - able for inspection all documents which may either directly or indirectly enable the party requiring the affidavit of discovery either to advance its own case or damage the case of its adversary. Documents which tend to advance only the case of the party making the discovery need not be disclosed unless such party intends to rely on those documents at trial. A party is entitled to claim privilege in certain documents, for example, communications with its legal representatives for the purpose of giv - ing or receiving legal advice, without prejudice communications, and the like.
Documents that are confidential but do not enjoy legal privilege, are usually either redacted or disclosed to the legal advisers under suitable restrictions. SA courts have held that the inventor story is not relevant to an objective determination of inventiveness. Therefore, discovery of inventor notebooks may be resisted as being not rele - vant. However, if the patentee decides to rely on aspects of the inventor story, then discovery would be required. 1.15 Defences and Exceptions to Patent Infringement The following may typically be relied on by way of defence. • Traditional grounds of invalidity. • The patentee consented or granted a licence. • The patentee waived its rights or is estopped from asserting them. • Prior use and Gillette defence. • The activities fall under the right to reason - able repair. • Exhaustion of rights. • The activities fall under legitimate compound - ing regulations. • Experimental use. • Bolar-type exemption. 1.16 Stays and Relevance of Parallel Proceedings SA courts would not ordinarily stay infringement proceedings (without an agreement between the parties) to await the outcome of foreign parallel proceedings. Since the Court of the Commissioner of Patents has nationwide jurisdiction, and since there are no substantive proceedings before the Patent Office, parallel proceedings in different tribunals
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