[40] But what I find most unappealing about Dr Rue's theory is that it lacks any form of logical underpinning. It
makes no sense for a formulator to take the time to do in vitro acid stability tests, and then to ignore the
results by proceeding to carry out what are very expensive and timeconsuming clinical trials on humans.
What his proposition amounts to is that the skilled formulator would have conducted in vivo bioavailability
tests regardless of the fact that he or she had no expectation that the formulation would not degrade in the
stomach and therefore to take a step which was strongly contraindicated. Stated somewhat differently: that
the skilled formulator would disregard the considerable costs, delays and risks associated with carrying out in
vivo tests in circumstances where the formulator had no expectation whatsoever that the test might lead to
any useful result.
Page 316 of [2014] 4 All SA 302 (SCA)
[41] By contrast, I find the reasoning of Prof Davies far more persuasive in its logical progression. In the light of
this evidence I agree with the court a quo's conclusion that Pharma had failed to establish its attack on the
patent in suit based on obviousness. This conclusion is also supported by the principle acknowledged in
English law, that an invention can lie in "finding out that which those in the art thought ought not to be done,
ought to be done" (Dyson Technology Ltd v Samsung Gwangju Electronics Co Ltd [2009] EWHC 55 (Pat) at 154)
or as it was formulated by Jacob LJ in a passage cited in Buhler AG v FP Spomax SA [2008] EWHC 823 (Ch) at
paragraph 47:
"A patentee who contributes something new by showing that, contrary to the mistaken prejudice, the idea will work or
is practical has shown something new. He has shown that an apparent 'lion in the path' is merely a paper tiger. Then
his contribution is novel and nonobvious and he deserves his patent."
Lack of novelty
[42] This brings me to Pharma's further ground of attack against the 2004 patent, based on the proposition that it
is not a true "divisional" of the 2002 patent and that it therefore lacks novelty in the light of the disclosures
made in the 2002 patent. This ground is to be understood against the background of section 37 o f t h e
Patents Act which provides:
"1.
Where at any time after an application had been lodged at the patent office and before it is accepted, a fresh
application is made in the prescribed manner by the same applicant in respect of part of the matter disclosed in
the firstmentioned application, the registrar may, on application made to him in the prescribed manner before
that application is accepted, direct that such fresh application be antedated to a date not earlier than the date
on which the firstmentioned application was so lodged.
2.
A patent granted on such fresh application shall not be revoked or invalidated on the ground only that the
invention claimed in such fresh application is not new having regard to the matter disclosed in the first
mentioned application."
[43] It is common cause that the application for the 2004 patent was filed under section 37 before the 2002
patent had been accepted. Likewise it is common cause that if it constituted a "fresh application" as
contemplated by the section, it would enjoy immunity against an attack based on the disclosure of the 2002
patent by virtue of section 37(2), but that if it was not, it would be open to that attack. Pharma's argument is
that it was not a "fresh application" properly so called.
[44] Bayer's first answer to the attack is that, since the 2004 patent was granted as a divisional patent by the
Registrar of Patents under section 37 in the form it was sought, Pharma's remedy was to seek the setting
aside of that decision in a review application which it never did. In support of this argument Bayer pointed out
that section 61 of the Act which enumerates the grounds for the revocation of a patent does not provide
for the revocation of a patent on the basis that it was wrongly registered as a "divisional patent" under
section 37. In further support of this argument, Bayer relied on the following statement by this Court in Clipsal
Australia (Pty) Ltd and another v Trust Electrical Wholesalers and another 2009 (3) SA
Page 317 of [2014] 4 All SA 302 (SCA)
292 (SCA) at paragraph 9 [also reported at [2007] 4 All SA 1082 (SCA) Ed], which was made with reference
to an analogous attack on the registration of a "set of articles" in terms of the Designs Act 195 of 1993:
"If the registrar has registered articles as a set when they in truth do not form a set it is at best a matter for review
but it cannot be raised as a defence to infringement or be a ground for revocation."
[45] I believe Bayer's objection to be wellfounded. At the same time I hold the view that Pharma's attack falls
down on its merits as well. The procedure provided for in section 37 is referred to in patent parlance as
"dividing out" part of the matter disclosed in the parent patent as a divisional patent. The divisional patent is
antedated and runs for the same period as the parent patent and claims priority from the same date.
Ultimately, the two separate patents (the parent and the divisional) run in parallel and for the same length of
time.
[46] The advantages of and requirements for divisional patents are explained with remarkable clarity by Jacob LJ in
Napp Pharmaceutical Holdings Ltd v Ratiopharm GmbH and Napp Pharmaceutical Holdings Ltd v Sandoz Ltd [2009]
EWCA Civ 252 at paragraphs 715. With regard to the requirements for a divisional patent he, inter alia, said:
"The two patents have, for practical purposes, the same text because they are 'divisionals'. The differences lie in their
respective claims, and in variations of the text consequential upon the dividing out process."
And:
"So what a patentee can do, having made an initial application, is to apply for a divisional patent. Provided the