"Unclean Hands" accusations in South African Bayer patent battle with Villa Crop

In 2018, Bayer Intellectual Property GmbH ("Bayer') geared up for a battle against Villa Crop Protection (Pty) Ltd ("Villa Crop') in the South African Patent Court. Bayer alleges that Villa Crop infringes its South African patent, ZA 2005/00230 (the 2005 patent). The 2005 patent claims spirotetramat, as an active substance. Spirotetramat is used in Bayer’s plant protection product, Movento, as well as Villa Crop’s competing product, Tivoli.

At this point it might seem obvious who the winner in this battle will be, but an error and unclean hands might very soon turn the tables…

First move: Bayer

Bayer made the first move: an application for an interim interdict (injunction). If granted, Villa Crop would have effectively been taken out of the market for the duration of the court proceedings, which could run for a number of years. However, Bayer’s application was defective. Some of their statements in support of the interim application were not deposed to (i.e., not attested to in front of a commissioner of oaths).  Without affidavits Bayer could not prove its case but, because it did not go on oath to explain the misstep, its attempts to introduce belated affidavits failed and the interim interdict was not proceeded with. Bayer lost the first move. The judgement is available here and  Villa Crop's heads of argument can be viewed here. 

Second move: Villa Crop

Villa Crop then applied for leave to amend its plea by introducing a special plea that Bayer approaches the Court with unclean hands. Its application was opposed by Bayer. 

Need to keep these hands clean!

The basis for Villa Crop's amendment went back into the history of Bayer's protection for spirotetramat.  Bayer’s 2005 patent has a priority date of 11 July 2005. Bayer claims, in their particulars of claim, that the 2005 patent has “at all material times” been valid and in force. To be valid, spirotetramat as claimed in the 2005 patent, must have been a novel compound, therefore, not known to the public, at 11 July 2005. At the time of applying for the 2005 patent, Bayer filed a declaration in support, stating that they believed that there were no grounds for revocation of the patent i.e. that, inter alia, the compound as claimed, was new. 

It must be kept in mind that South Africa does not have substantive examination of patents. Patents are examined on formal grounds only. The South African patent system relies on the integrity of the applicant and the assisting patent attorney for some measure of “quality control”. The declaration referred to above aims to keep the system honest and as a “filter” to lessen the load on the Patent Office.

Bayer has another, earlier, patent for spirotetramat, being European patent number EP 0 915 846 with an international filing date of 23 July 1997 ("the ’97 patent"). The ’97 patent also claims spirotetramat. Bayer obtained supplementary protection certificates (SPC’s) in respect of spirotetramat as disclosed in the ’97 patent. In doing so, it, inter alia, identified Movento as the commercial product containing spirotetramat. In other words, so Villa Crop argues, Bayer, in its applications for SPC’s, made disclosures incompatible with its subsequent claims in South Africa that spirotetramat was new at the priority date of the 2005 patent. Villa Crop’s attitude is that Bayer should not be permitted to advance a case in South Africa, in respect of spirotetramat which contradicts the case it advanced in respect of spirotetramat before numerous countries in the European Community.

Why this matters

The outcome could mean that patent applicants in South Africa would have to take care to ensure that in complying with their duty of good faith when filing patent applications they have regard for any disclosures made globally, including by way of patent and SPC applications in other jurisdictions.

Judgment on Villa Crop's application to amend is awaited.