In March 2026, the South African Supreme Court of Appeal (SCA) handed down a significant decision in The Regents of the University of California & Others vs Eurolab (Pty) Ltd & Others. The case turned on a deceptively simple question: who is legally entitled to apply for a patent under South African law?
South African patent number 2007/10870 stood at the centre of the dispute. It covered enzalutamide, a compound used to treat prostate cancer and marketed globally as the blockbuster drug Xtandi. A generic manufacturer challenged the patent. It argued that the University of California had never lawfully acquired the right to file the patent application in the first place. If proven, that defect would invalidate the patent entirely.
The facts
The dispute centred on a patented cancer treatment that the University of California and the Howard Hughes Medical Institute developed through a collaboration. Eight co-inventors contributed to the invention. Five worked for the University of California, while three worked for the Howard Hughes Medical Institute.
The case traced its roots to a 1986 collaboration agreement between the two institutions. Under that agreement, the parties intended the University of California to own any patentable inventions arising from their joint research. The Howard Hughes Medical Institute had to transfer its rights in those inventions to the University of California. However, the parties signed the formal assignment several years after they filed the patent application.
Before filing the patent application, the University of California secured the necessary rights from its own five inventors. The three Howard Hughes Medical Institute inventors later assigned their rights to the Howard Hughes Medical Institute in 2003. However, the Howard Hughes Medical Institute only completed its formal assignment of those rights to UC in 2009. This occurred three years after the University of California lodged the patent application.
The issue came to a head when Eurolab obtained regulatory approval for Enzutrix, a generic prostate cancer treatment containing enzalutamide. This was the same active compound that the University of California’s patent protected. Dis-Chem distributed the product. After the University of California threatened patent infringement proceedings, Eurolab challenged the patent’s validity. It argued that the University of California had not been entitled to apply for the patent in the first place.
The core question
At the heart of the case was a deceptively simple question: does a patent applicant need to hold the right to file a patent application on the day it submits the application? Or can a later assignment cure the defect?
The answer turned on the interpretation of two provisions of the Patents Act. Section 27(1) provides that the inventor may file a patent application. Alternatively, a person who has acquired that right from the inventor may file the application. Section 61(1)(a), meanwhile, allows a court to revoke a patent if the patentee is not a person entitled under section 27 to apply for the patent.
The University of California argued that section 61(1)(a) uses the present tense. Therefore, it argued that the court could assess its entitlement when someone challenged the patent. On that interpretation, the 2009 assignment was sufficient to support the patent.
Eurolab and the other respondents disagreed. They argued that the court had to determine whether the University of California held the necessary rights when it filed the patent application.
The decision of the court
The Commissioner of Patents ruled against the University of California. The Commissioner found that the 2009 assignment came too late. The parties signed it three years after the University of California filed the patent application.
The court also held that the 1986 Collaboration Agreement did not itself transfer the Howard Hughes Medical Institute’s rights to the University of California. Instead, the agreement merely created an obligation to transfer those rights in the future.
As a result, the Commissioner concluded that a patent applicant must already hold the right to apply for a patent when it files the application. A future right to obtain those rights was not enough. In practical terms, applicants must establish their right to file before they submit their applications.
The SCA’s decision
On appeal, the SCA majority agreed with the Commissioner on timing. The right to apply must exist on the filing date. This approach aligned with the UK Supreme Court’s decision in Thaler vs Comptroller, which held that entitlement must be assessed when the applicant files the application. The SCA therefore considered only the University of California’s rights on or before 29 March 2006.
The SCA acknowledged that the Collaboration Agreement did not automatically transfer ownership of the invention to the University of California. However, it held that “this does not in any manner impact the University of California’s right to apply for the patent because it was not constrained to prove ownership by way of assignment [but] to establish entitlement to do so”.
The court relied on the earlier decision in E I Du Pont de Nemours and Company vs SA Nylon Spinners (Pty Ltd). In that case, an employment contract transferred patent rights immediately. The parties still had to sign further assignment documents, but that requirement did not prevent the transfer of rights.
The SCA drew from that case the principle that a formal later assignment may be only a formality. This applies where the underlying contract has already conferred the relevant rights.
The SCA also noted that section 27 of the current Act differs from the previous Patents Act. The current provision does not refer to an “assignment agreement” or “assignee”. Therefore, the SCA accepted that a contract or another lawful mechanism can give an inventor’s rights to a person who then acquires the right to apply.
Contractual entitlement and the right to file
In reaching its conclusion, the SCA held that the University of California only needed to show that a contractual provision gave it authority to apply for the patent. In this case, the 1986 Collaboration Agreement provided that authority.
The agreement unconditionally obligated the Howard Hughes Medical Institute to assign all its rights in patentable inventions to the University of California.
This distinction is important. A completed formal assignment does not necessarily determine the right to file. Another binding legal mechanism may already have created that entitlement. However, applicants must still demonstrate a legally enforceable basis for their entitlement when they file.
The dissent
Not all the SCA judges agreed. Baartman JA, in dissent, accepted the majority’s rule that the right to apply must exist when the case is filed. However, she disagreed with the majority’s assessment of the facts.
She found that the agreement only gave the University of California the right to ask the Howard Hughes Medical Institute to transfer the rights. It did not mean that the University of California actually held those rights at the relevant time.
Until the Howard Hughes Medical Institute made the transfer, the Howard Hughes Medical Institute retained the rights. Consequently, the University of California did not hold them at the crucial moment.
What does this mean in practice?
The SCA has clarified that applicants do not need a formal written assignment in every case to establish the right to apply for a patent. A clear, binding contractual right, like the one in the 1986 Collaboration Agreement, can be enough. However, a mere expectation, hope, or conditional promise to transfer rights later is not enough.
For research institutions, universities, and companies working together, the key point is simple: make sure your contract clearly gives the applicant the right to file the patent before submitting the application.
The SCA majority allows some flexibility by separating ownership from the right to apply. However, the dissent shows that this issue remains unsettled. Therefore, applicants should avoid unclear contract wording because it creates unnecessary risk.
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| Amy Anderson | Patent Professional Intern | mail me | | with oversight by Dirk Hanekom | Partner | mail me | |
| | Spoor & Fisher | | |
