Syntheta (Pty) Ltd v Janssen Pharmaceutica NV and another
 4 All SA 445 (A)
Supreme Court of Appeal
21 September 1998
Harms, Scott, Zulman, Plewman JJA and Farlam AJA
JJF Hefer and I Potgieter
1999 (1) SA 85 (SCA)
. Editor's Summary . Cases Referred to . Judgment .
Patents Licence Compulsory Section 56 Patents Act 57 of 1978 Jurisdictional facts to be proven to make out a
case for abuse under subsections (2)(a) and (2)(d) Applicant had to show that patented invention was not being
"worked" in the Republic
Page 446 of  4 All SA 445 (A)
on and to the requisite scale or extent and that there was a refusal to grant a licence on "reasonable terms".
Practice Applications Applicant has to make out a case in its founding affidavit.
The Appellant applied under section 56 of the Patents Act 57 of 1978 ("the Act") for a compulsory licence in respect
of a patent. The application was based on sections 56(2)(a) and 56(2)(d) of the Act. The application was dismissed
in the court a quo.
Held On appeal, the Court considered the provisions of section 56 and held that abuse of patent rights was a
cornerstone of the section. Under section 56(2)(a) the Appellant was required to demonstrate as a jurisdictional
fact, that the patented invention was not being "worked" in the Republic on and to the requisite scale or extent.
The jurisdictional fact to be proved under subsection (2)(d) was a refusal to grant a licence on "reasonable terms".
The Court held that the general rule was that an applicant had to make out its case in the founding papers. In
casu, the Court found that the Appellant's averments in its founding affidavit were little more than a recitation of the
words of subsection (2)(a) and not a statement of facts from which a legal conclusion could be drawn. The Appellant
had not alleged the jurisdictional facts and no abuse under subsection (2)(a) had been made out.
With regard to subsection (2)(d), the Appellant bore the onus of establishing as a jurisdictional fact the
reasonableness of the terms of the licence agreement. A bald assertion did not establish the facts necessary for a
legal conclusion. The Court found that there was no reason why the Appellant could not have established facts from
which (even tentative) conclusions could be made. No serious attempt had been made to prove the essential
jurisdictional facts and no case had been made out for abuse under subsection (2)(d).
The appeal was dismissed with costs.
For Patents, see LAWSA (Vol 21, paragraphs 167)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed.)
HoffmannLa Roche & Co AG's Patent  RPC 601 F
View Parallel Citation
This appeal concerns an application in terms of section 56 of the Patents Act 57 of 1978 (the Act) for a compulsory
licence in respect of a registered patent in circumstances and on grounds which are somewhat unusual. The
appellant, Syntheta (Pty) Ltd, formerly Delta G Scientific (Pty) Ltd, is a subsidiary of a substantial public company,
View Parallel Citation
Sentrachem Ltd the main business of which is concerned with chemical products. What is sought in the application is
a licence under South African Letters Patent 75/7193 in respect of an invention entitled "Triazole Derivatives" (the