Bromine Activated Chloramine - Buckman vs BCL

In an interesting patent case, Bromine Compounds Limited (BCL) contested Buckman Laboratories Pty Ltd, South Africa's right to use 'bromine activated chloramine' as a biocide in the manufacture of paper - marketed by BCL under the trademark of 'Fuzzicide'. The patents were filed by BCL a daughter company of Israel Chemicals Limited (previously known as Dead Sea Bromine Group), in a number of countries.

It all started in March, 2005 when BCL instituted proceedings against Buckman Laboratories in South Africa for a patent infringement arising out of Buckman’s use of BCL's proprietary technology at several paper mills in South Africa.

BCL's press release (Nov 2, 2006) states that, 'In its counterclaim, Buckman admitted that the invention falls within the scope of the patent; however, Buckman argued that BCL patent
lacked novelty. On July 29 2006 the court rejected Buckman's argument, and further ordered that Buckman cannot use their competing process, and an inquiry into the damages suffered by BCL as a consequence of the infringement is to be held.'

Buckman requested leave to appeal which was opposed by BCL but upheld and the contest ended up in the Supreme Court of Appeal of South Africa where the following order was made (details are available on SAFLII):

a) The appeal is upheld with costs including the costs of two counsel
b) The order made by the court a quo is replaced with the following order:
(i) The plaintiff's (BCL) action is dismissed with costs including the costs of two counsel
(ii) The defendant's (Buckman) counterclaim for the revocation of SA Patent 92/4018 is granted, and subject to what is ordered in subparagraph (iii) below, the patent is revoked
(iii) The revocation order granted in subparagraph (ii) is provisional. It will become fully operative in respect of the patent concerned, if the patentee does not within one month file notice of an application to amend such patent, or if having filed such application, the patentee withdraws it. If an application as aforesaid is made and not withdrawn, it shall be decided at the hearing of such application whether or not the revocation order is to be put into operation.
(iv) The plaintiff (BCL) is ordered to pay the defendant's (Buckman) costs in respect of the
counterclaim including the costs.

The text of the appeal judgment makes interesting reading and this case raises questions regarding how many 'articles of commerce' are being patented for uses where the 'inventive step' is difficult to justify. The issue is usually that once a patent examiner has ruled that a patent is acceptable, it is very expensive, and risky to challenge the ruling and so nothing is done. It is more likely that something will happen when a company decides to enforce a patent and the defendant stands his/her ground and puts up a good defence.

Bromine activated chloramine (BAC) technology is marketed as Deilurit by BK Giulini and Spectrum XD3899 by Hercules with the latter having success in the paper industry. The ruling only covers the South African patent - should the remaining patents be challenged? Ammonium bromide mixed with sodium hypochlorite.