The Regents of the University of California & Others v Eurolab (Pty) Ltd & Others

The Regents of the University of California (UC) was the registered proprietor of South African patent no 2007/10870 relating to the prostate cancer drug Xtandi (enzalutamide), with Astellas entities as licensees. Eurolab, a generic pharmaceutical company, introduced a generic version (Enzutrix), distributed by Dis-Chem companies. Three interrelated applications were brought before the Commissioner of Patents: (a) Eurolab sought an interdict under s 70 of the Patents Act to prevent alleged groundless threats of infringement proceedings by UC; (b) UC sought interim relief interdicting Eurolab and Dis-Chem from infringing the patent; and (c) Dis-Chem counterapplied for revocation of the patent under s 61. The Commissioner revoked the patent on the basis that UC was not entitled to apply for the patent under s 27 at the time of filing, as it had allegedly not secured assignments from all inventors (including inventors employed by HHMI) before filing. UC appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The Commissioner of Patents’ order was set aside and replaced with an order dismissing Eurolab’s s 70 application and Dis-Chem’s revocation counterapplication with costs. UC’s application for interim relief was dismissed, with each party ordered to pay its own costs in respect of that application.

This judgment authoritatively clarifies South African patent law on entitlement to apply for a patent, confirming that entitlement under s 27 must exist at the time of filing and cannot be retrospectively cured by later assignments. It aligns South African law with comparative international patent jurisprudence and provides important guidance on revocation proceedings under s 61(1)(a), contractual rights to inventions, and the limits of groundless threats applications.