On 27 November 2015, the Supreme Court of Appeal (SCA) upheld an appeal by Merck Sharpe Dohme (“MSD”), Merial LLC and Merial South Africa (Pty) Ltd, against Cipla Agrimed (Pty) Ltd (Cipla). The SCA found that Merial and MSD’s patent for its Ivomec Gold product was valid; and certified it as such.

Following the decision of the SCA, Merial approached the Court of the Commissioner of Patents for an interim interdict prohibiting Cipla Agrimed from continuing to infringe the patent through its continued sale of Ivermax Platinum LA. That order was granted on 8 April 2016.   Cipla is therefore prohibited from making, using, exercising, disposing or offering to dispose of, or importing Ivermax Platinum LA in South Africa pending the determination of the infringement action by the Court of the Commissioner of Patents.

The patent in suit is for Merial’s Ivomec Gold product, i.e. an ivermectin long-acting injectable formulation against parasites in cattle. Cipla entered the market in August 2011 with its competing Ivermax Platinum LA product. In June 2011 Cipla applied for the revocation of the Merial’s patent and, although the Court of the Commissioner of Patents found in the first instance that Merial’s patent was invalid, the SCA has now confirmed that the patent is valid and enforceable. The infringement action, instituted in October 2011 by Merial, is still to be decided and until then (or until patent expiry, whichever occurs first) the interim interdict remains in force.

At van Rooy of KISCH IP stated that this is a significant victory for MSD and Merial in a long battle against generic companies entering the market whilst the patents for the original products are still in force.

The full SCA judgment is available at the following link: http://www.justice.gov.za/sca/judgments/sca_2015/sca2015-175.pdf


Submitted by KISCH IP