In a judgement handed down in the matter of Gallagher Group Ltd and Another v I O Tech Manufacturing and Others (96/6799) [2012] ZACCP 1 (8 February 2012) (“Gallagher”), the North Gauteng High Court adopted an approach to evaluating contributory or indirect infringement of patents which differs from that established in previous matters by the Court of the Commissioner of Patents.

Prior to the Gallagher judgement being handed down in the North Gauteng High Court, the South African common law, and not the South African Patents Act (57 of 1978), was applied to establish contributory infringement. The concept of contributory infringement has been considered in a number of matters over the years, for example in Viskase Corporation v Columbit (Pty) Ltd and Harold Henry Zeh 1986 BP 432 (CP).
Contributory infringement occurs when an infringer supplies a method and/or a means to infringe a patent, but does not directly infringe the patent himself. In other words, contributory infringement allows a person to gain an advantage from a patented invention without personally having committed an act of infringement. For example, someone could sell a known substance with instructions on how to use that substance in a method that has been patented. Alternatively, a kit containing the components of a patented invention could be made available for sale, with the effect that the components are assembled by a buyer or a user, thereby to form an infringing article. Therefore the buyer or the user infringes, but only as a result of receiving instructions from the seller.

In previous matters contributory infringement has been established as being delictual in nature, wherein all the elements of delictual liability need to be present for infringement to occur. In order to establish that there was contributory infringement, the patentee needs show that the defendant intended to commit the infringement and the defendant had knowledge of the unlawfulness of his act.

Case law illustrating the requirement for establishing delictual liability:

Viskase Corporation v Columbit (Pty) Ltd and Another 1986 BP 432 (CP)

Judge Harms examined a claim for contributory infringement based on the allegation that the second defendant “aided and abetted” the first defendant in infringing a patent. The claim was dismissed as it was found that the second defendant was not aware that his acts were wrongful (the judge found there was no evidence the second defendant had “wederregtelikheidsbewussyn”), and therefore delictual liability was not established: “I fail to see how a person can abet unless he knows or has reason to believe that the act in question is a tortuous act. The concept of aiding and abetting applies only to delicts committed with intent (or dolus). In casu there is no evidence that second defendant had a "wederregtelikheidsbewussyn””(pages 452 and 453).

Grande Paroisse SA v Sasol Ltd and Another 2003 BIP 11 (CP)

The court investigated whether the second defendant was aiding and abetting or alternatively inciting, instigating or assisting the first defendant to infringe its patent. The court ruled that the “inducing, aiding and abetting, advising, inciting, instigating, or assisting” the infringement of a patent can sustain a cause of action. The court held that under South African law there is provision for the liability of a defendant who “procures” or “induces” the infringement of a patent.

Sunsmart Products (Pty) Ltd v Vari-Deals 101 (Pty) Ltd and Others 2006 BIP 1 (CP)

The following criteria need to be satisfied for a finding of contributory infringement (pages 10 and 11):
• An act or conduct.
• Wrongfulness/unlawfulness.
• Fault ('die wederregtelikheidsbewussyn').
• Harm.
• Causation.”

The above requirements are all requirements to prove a delict.

Section 45 of the South African Patents Act

According to Section 45 of the South African Patents Act (57 of 1978), the following acts are exclusively reserved for the patentee of an invention (or an authorized person such as a licensee), who may:

1. make;
2. use;
3. exercise;
4. dispose of;
5. offer to dispose of the invention; and/or
6. import the invention into the Republic.

In the Gallagher case, the question under consideration by the Court was whether or not the method of operation of an electric fence security system was infringed by the defendants. The defendants denied that their product fell within the scope of the claims of the plaintiff’s patent, and alleged that the plaintiffs had not proved infringement as envisaged by Section 45.

Evidence tendered by the plaintiff’s expert witness stated that the defendants were offering a course to the public on electric fence installation, in which the expert witness himself had enrolled. The expert witness was sent promotional and training material regarding the installation of an electric fence system. The expert witness bought and tested the defendant’s installation kit, which included an installation manual.

In his judgement, Judge Legodi adopted the approach for determining patent infringement as laid out in Gentiruco AG vs Firestone SA (Pty) Ltd 1972 1 ALL SA201(A), 1972 (1) SA589(A), wherein the court confirmed that the onus is on the plaintiff to prove that the defendant has infringed one or more claims of the patent. The court’s first step in determining whether or not there is infringement is to determine the nature and scope of the invention by construing the claims, so as to determine the essential integers of the claims.

In order to determine whether or not infringement has, indeed, occurred, the claims of the patent are compared with the features of the allegedly infringing product or method. The plaintiff needs to show that all the essential integers of the claim have been infringed upon.

In the Gallagher case, Judge Legodi found that, on a balance of probabilities, the plaintiff’s patented method of operation of a fence security system had been infringed upon.

Further, Legodi J held that “offering the means through which to infringe another person’s patent should be seen to be falling squarely within the ambit of the prohibition under Section 45”. In particular, the actions of the defendant were seen to fall under: “dispose of; offer to dispose of …the invention”, according to Section 45. The learned judge, in adopting a purposive approach to the interpretation of Section 45 of the Patents Act, added that the purpose of the legislature could not have been to prohibit the infringer, but not the means through which the infringement is facilitated. It is interesting to note that Judge Legodi did not consider the fact that the question of contributory infringement had previously been dealt with as a delict and that the order given concerning contributory infringement was phrased without reference to “disposing” or “offering to dispose” of the invention as set out in Section 45 of the Act.

More recently, on 26 July 2012, the Supreme Court of Appeals, in Cipla Medpro (Pty) Limited vs Aventis Pharma SA and Others 2012 (Case number 139/2012) considered the question of contributory infringement. In referring to UK law wherein contributory infringement is provided for in its Patents Act, the court concluded that there are no such comparable provisions in the South African Patents Act and, much like Judge Legodi, stated that there would be a deficiency in our law if the issue of intentional aiding and abetting infringement of a patent was not provided for. Unlike Judge Legodi however, the Supreme Court of Appeals turned to the law of delict.

Conclusion

In the light of previous case law establishing contributory infringement as delictual in nature, the approach as presented in the Gallagher judgement, wherein contributory or indirect infringement is seen to fall squarely within the ambit of the exclusive acts reserved for patentees under Section 45, is a novel approach. The extent of the implications of this approach is however debatable especially when the Supreme Court of Appeal (above Cipla case) commented that it matters not whether the act of contributory infringement is a delictual one or one created by statute.

Written by Carla Moerdyk – Candidate Attorney, Patents, Adams & Adams

Verified by – Alexis Apostolides, Partner, Patents, Adams & Adams