Unión Europea

Sudáfrica

Patentes (incluida la protección de variedades vegetales)

1. Is "offering for sale" of a patented article (either accompanied or not accompanied by possession of the article) an act of infringement of the patent (Article 28 of the TRIPS Agreement)? Is "importing" (for the purposes of making, using, offering for sale or selling) a patented article, an act of infringement of the patent (Article 28 of the TRIPS Agreement)?

Section 45(1) of the Patents Act at present provides as follows: "The effect of a patent shall be to grant to the patentee in the Republic, subject to the provisions of this Act, for the duration of the patent, the right to exclude other persons from making, using, exercising or disposing of the invention, so that he shall have and enjoy the whole profit and advantage accruing by reason of the invention." Although the South African Courts have not yet had the opportunity of interpreting the term "dispose of" in the context of section 45(1), it is expected that the ordinary grammatical meaning will be attached to the term, so that it will be interpreted to be wider in scope than "selling" and would probably include letting, distributing, donating, selling, and offering for sale. Accordingly, it is expected that the "offering for sale" of a patented article would be actionable in South African law as it presently stands. At present, the importation of a patented article is not clearly covered by the provisions of section 45(1). However, the term "exercising" has a wide scope, and the phrase "so that he shall have and enjoy the whole profit and advantage accruing by reason of the invention" is regarded as indicative of the intention of the legislature that only the patentee should stand to benefit under the patent. To remove any uncertainty, the Intellectual Property Laws Amendment Bill currently before Parliament, includes in clause 40 an amendment of section 45(1) of the Patents Act, to expressly mention the acts of "offering to dispose of" and "importing" the invention as acts of infringement. Once this Bill is approved by Parliament, section 45(1) will be fully compatible with Article 28 of the TRIPS Agreement. As regards the phrase "so that (the patentee) shall have and enjoy the whole profit and advantage accruing by reason of the invention", the current interpretation is that this phrase operates in a manner to expand the exclusive rights given to the patentee, rather than to restrict the enforcement of the rights.