SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
• whether the alleged infringer committed an act that may constitute an infringement; • whether the act falls within the scope of any of the claims after they have been construed; and • whether the defendant has a valid defence. The concept of equivalent infringement only plays a role after construing the claims and determining the essential and non-essential integers. If the essential integers are substi- tuted by an equivalent, no infringement occurs. The prosecution history plays a role in whether a valid defence exists for the alleged infringer – eg, whether assignment has occurred or there has been a lapse. 3.5 Defences Against Infringement Fair, reasonable, and non-discriminatory (FRAND) voluntary licences do not exist in South African patent law. Rather, the use of an inven- tion to determine information for regulatory bod- ies is considered an act of non-infringement and forms part of bolar provisions. Laches is similarly not a part of South African law. Concerning patents and designs, defences against infringement include all the grounds for revocation, special pleas of lis pedens and res judicata, issue estoppel and the exhaustion of rights, as well as leave and licence, election and waiver. Concerning copyright, the use of any of the exceptions to protect the work may be used as a defence. There is some precedent for the use of the constitutional right to freedom of expres- sion as a defence but this is not well developed. Other defences include that the work is not origi- nal or the claimer is not the owner, the claim- ant has abandoned the right to claim copyright infringement or a tacit licence exists.
Concerning plant breeders’ rights, a defence against infringement will include an applica- tion to terminate the right based on any of the
grounds for termination. 3.6 Role of Experts
The role of expert witnesses is mainly to guide the court in order for it to understand the tech- nology in question, as viewed by a person skilled in the art. These witnesses are mostly appointed by the respective parties and offer evidence in support of their argument. The expert does not determine the meaning of a claim or whether it stands to be revoked. Rather, the experts guide the court on the state of the art while making such determinations. Often, contradictory expert evidence is given, and the court will analyse the logical argument behind the evidence offered by opposing experts. It is therefore the duty of the court to determine the meaning of the specifica- tions and whether infringement, novelty or obvi- ousness is present. 3.7 Procedure for Construing the Terms of the Patent’s Claim The procedure for construing the terms of the patent claims originates from case law in South Africa. The authoritative case for construing pat- ent claims is Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A), as modified by Mon- santo Co v MDB Animal Health (Pty) Ltd (for- merly MD Biologics CC) 2001 (2) SA 887 (SCA). In general, the approach used to construe the claims incorporates purposive interpretation while examining all aspects of the interpretation, from the ordinary meaning of words and those defined in the document to contextual analysis. 3.8 Procedure for Third-Party Opinions In accordance with Section 38 of the Constitu- tion, the court may involve experts to uphold constitutional values. Also, in accordance with
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