Abstract

This case comment examines the recent judgment in Regents of the University of California and Others v Eurolab (Pty) Ltd and Others. The dispute centred on the validity of a South African patent for a pharmaceutical compound marketed by the Regents of the University of California (“UC”) under the brand name Xtandi for certain forms of prostate cancer. Eurolab (Pty) Ltd launched a generic version of the same drug, Enzutrix, which Dis-Chem Pharmacies distributes. When UC pursued an interim interdict, Eurolab and Dis-Chem challenged the patent’s validity on two primary grounds: (1) the patentee’s lack of entitlement to apply for the patent under section 27 of the Patents Act 57 of 1978 and (2) alleged misrepresentations concerning priority. The Commissioner held that, where the applicant for a patent is not the inventor, that applicant must have acquired the right to apply from the inventor before filing. On the facts, certain co-inventors had pre-assigned their rights to a research institution, and no complete re-assignment was furnished to the patentee before the filing date. As a result, the patentee was not “a person entitled under section 27” at the critical date, rendering the patent invalid and liable to revocation. This judgment reinforces the strict requirement that the chain of title must be perfected before filing, underscoring the importance of complete and timely assignments for patent validity. It also clarifies that a post-filing agreement to assign cannot cure an applicant’s lack of initial entitlement. For prospective patent holders, the decision highlights the practical necessity of sound contractual arrangements with inventors (and any third-party research sponsors) before proceeding with a national or international patent filing.