subjectmatter of this does not extend beyond the content of the earlier application, he can get a freestanding patent
for the divisional application. Because the date of filing is deemed to be that of the 'parent' as the jargon goes, a
patentee cannot extend the period of protection by applying for a divisional."
And:
"One of the features of the divisional system is that each divisional must have claims which are different: the patentee
cannot have the same claim in different patents."
[47] Pharma's first argument as to why the 2004 divisional application was not a divisional patent as contemplated
in section 37 was that for all intents and purposes the body of the 2004 patent and that of the 2002 patent is
the same. As a matter of fact, that is so. But, I do not think that renders the objection valid. As explained by
Jacob LJ, the very idea of a divisional patent is that it has for practical purposes the same text as the parent.
The invention disclosed is the same. The difference between the two lies in the claim.
[48] Pharma's second argument rests on the proposition that the claim of the 2004 patent is the same as the claim
of the 2002 parent claim. Or, stated in patent law jargon, that the two claims are coterminous. As a matter of
law, this cannot happen. That much appears, for instance, from the passage in the Napp case to which I have
referred (see also TD Burrell South African Patent and Design Law (3ed) (1999) at paragraph 2.62). But this
time the argument falls down on the facts. Claim 1 of the 2002 patent is expressly limited to DSP in micronised
form. On the interpretation of
Page 318 of [2014] 4 All SA 302 (SCA)
claim 1 of the 2004 patent, contended for by Pharma, the two would indeed be the same. But I have already
held that interpretation unsustainable. In accordance with the contrary interpretation of the 2004 claim
contended for by Bayer which I found to be correct this claim is broader than the 2002 parent claim, in that
it includes DSP having the rapid dissolution rate specified in the claim, however that dissolution rate had been
obtained, which clearly includes, but is not confined to micronisation. This means that the two claims are not
coterminous. Following upon this, Pharma's further argument was that section 37 does not allow a divisional
claim which is broader than the parent claim. It sought to find support for this argument in the statement by
Jacobs LJ in Napp (paragraph 10) that "Provided the subject matter of this [ie the divisional patent] does not
extend beyond the content of the earlier [parent] application, he can get a freestanding patent for the
divisional application". But I do not believe that this statement lends support to Pharma's argument. What
Jacob LJ refers to is that the claim of the divisional patent cannot be broader than the invention disclosed in
the body of the parent patent. This would, after all, give rise to a ground of revocation that the claim is not
fairly based on the matter disclosed in the application (see section 61(f)(ii) of the Act).
[49] Pharma's final argument as to why section 37 should be construed so as to exclude a divisional patent which
claims broader protection than its parent, is that it could otherwise place the infringer of both patents in an
invidious position when licences in respect of the two patents were granted to different licensees. In this
event, so Pharma's argument went, the infringer could potentially be held liable by two plaintiffs instead of
one. I believe there are two answers to this argument. First, I do not think the position would be any different
if the divisional patent is narrower than the parent. Secondly, the prejudice feared by Pharma seems to be
more apparent than real. If the remedy sought by the two licensees is an interdict, the two interdicts will
clearly overlap. If on the other hand, the remedy sought is one in the form of damages, each licensee will be
confined to the amount that he or she can establish. In the circumstances, I find that Pharma's attack of the
patent on the basis of novelty must also fail.
Conclusion
[50] For these reasons the appeal is dismissed with costs, including the costs of two Counsel.
(Cachalia, Wallis, Mbha JJA and Mathopo AJA concurred in the judgment of Brand JA.)
For the appellant:
L Bowman SC and B du Plessis instructed by Von Seidels, Cape Town and Webbers, Bloemfontein
For the respondent:
P Ginsburg SC and G Marriott instructed by Adams & Adams Incorporated, Pretoria and Honey Attorneys Incorporated,
Bloemfontein