Authors: Melody Musoni; Rory Moore.

A 2017 judgement by the United Kingdom Supreme Court has provided further guidance on the application of the so-called “doctrine of equivalents” to the question of indirect patent infringement in the United Kingdom.  This judgement may be influential on the development of South African patent law.

On 1 August 2011 Justice Bennett handed down her decision in Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848, a case in which “additional” (or punitive) damages were considered for the first time in the context of patents in Australia.

Until 2006, when additional damages were introduced into the Australian Patents Act 1990, damages available to a successful patentee were limited either to an assessment of actual damage caused to the patentee, or to an assessment of the “extra” profit derived by the infringer from their infringing activity. As a sub-class of the first type (i.e. as one method of assessing the “actual damage” suffered), an award based on a “reasonable royalty” calculation could be made. A reasonable royalty is based on a theoretical consideration of what royalty rate might have been negotiated between reasonable parties had the infringer approached the patentee instead of carrying out their infringing acts, and had the patentee been a willing licensor. In practice, reasonable royalties are rarely determined in court as the calculations can become more complex than the patent trial itself. Usually, if infringement is found the outcome is an injunction (i.e. an interdict) and a negotiated settlement between the parties.

Since 2012 it has not been necessary to list all  inventors as “applicants for the purposes of the United States only” when filing a PCT International Application.  In any International Application the assignee can be listed as the “applicant for purposes of all designated States” even if the United States is designated.  Also, the inventors can now be listed as “inventors only” (unless they are, in fact, also applicants because they have not assigned their rights).

Mr Rory Moore, founder of Moore Intellectual Property, has received a 2013 Client Choice award from the International Law Office (ILO). Winners were honoured at a gala dinner held in London on 27 February.

Moore is a Registered South African Patent Attorney and specialises in patent and trade mark law in South Africa and other African territories. He was the exclusive winner of the “Intellectual Property – Patents” category for South Africa.