In March 2026, the Supreme Court of Appeal (SCA) handed down a significant decision in The Regents of the University of California & Others v Eurolab (Pty) Ltd & Others; a case that turned on a deceptively simple question: who is legally entitled to apply for a patent under South African law?

At stake was South African patent number 2007/10870, covering enzalutamide, a compound used to treat prostate cancer and marketed globally as the blockbuster drug Xtandi. The challenge arose when a generic manufacturer argued that the University of California (UC) had never lawfully acquired the right to file the patent application in the first place, a defect, if proven, that would invalidate the patent entirely.

The Facts

The dispute centred on a patented cancer treatment developed through a collaboration between UC and the Howard Hughes Medical Institute (HHMI). The invention had eight co-inventors, five employed by UC and three by HHMI.

The roots of the case stretched back to a 1986 collaboration agreement between the two institutions. Under that agreement, any patentable inventions arising from their joint research were intended to belong to UC. While HHMI was required to transfer its rights in such inventions to UC, the formal assignment was only signed several years after the patent application had been filed.

UC had secured the necessary rights from its own five inventors before filing the patent application. The three HHMI inventors later assigned their rights to HHMI in 2003, but HHMI’s formal assignment of those rights to UC was only completed in 2009, three years after the patent application was lodged.

The issue came to a head when Eurolab obtained regulatory approval for Enzutrix, a generic prostate cancer treatment containing enzalutamide, the same active compound protected by UC’s patent. Dis-Chem distributed the product. After UC threatened patent infringement proceedings, Eurolab challenged the validity of the patent, arguing that UC had not been entitled to apply for it in the first place.

The Core Question: Right to File?

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 is submitted, 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 a patent application may be filed by the inventor or by a person who has acquired that right from the inventor. Section 61(1)(a), meanwhile, allows a patent to be revoked if the patentee is not a person entitled under section 27 to apply for the patent.

UC argued that the wording of section 61(1)(a), which is framed in the present tense, meant that its entitlement could be assessed at the time the patent was challenged. On that interpretation, the 2009 assignment from HHMI was sufficient to support the patent. Eurolab and the other respondents disagreed, arguing that the relevant question was whether UC had the necessary rights when it filed the patent application in the first place.

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The decision of the Court a quo

The Commissioner of Patents ruled against UC. It found that the 2009 assignment came too late, as it was signed three years after the patent application was filed. The court also held that the 1986 Collaboration Agreement did not itself transfer HHMI’s rights to UC; it merely created an obligation to do so in the future. As a result, the Commissioner concluded that a patent applicant must already hold the right to apply for a patent when the application is filed. A future right to obtain those rights was not enough.

The SCA’s Decision

On appeal, the SCA majority agreed with the Commissioner on timing: the right to apply must exist at the filing date. This was consistent with the UK Supreme Court’s decision in Thaler v Comptroller, which held that entitlement is assessed when the application is filed. The SCA therefore considered only UC’s rights on or before 29 March 2006.

The SCA acknowledged that the Collaboration Agreement didn’t automatically transfer ownership of the invention to UC but held that “this does not in any manner impact UC’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 v SA Nylon Spinners (Pty) Ltd, where an employment contract was held to transfer patent rights immediately, even though further assignment documents were still to be signed. The SCA drew from that case the principle that a formal later assignment may be only a formality if the underlying contract has already conferred the relevant rights.

The SCA noted that section 27 of the current Act, unlike the previous Patents Act, does not refer to an “assignment agreement” or “assignee”. It therefore accepted that the right to apply may be acquired from the inventor by contract or another lawful mechanism.

In reaching its conclusion, the SCA held that it was sufficient for UC to show that it had authority to apply for the patent by virtue of a contractual provision, namely, the 1986 Collaboration Agreement, which unconditionally obligated HHMI to assign all its rights in patentable inventions to UC.

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. But she disagreed on the facts. She found that the agreement only gave UC the right to ask HHMI to transfer the rights, it did not mean UC actually held them at the time. Until HHMI made the transfer, the rights stayed with HHMI, leaving UC without them at the crucial moment.

What Does This Mean in Practice?

The SCA has clarified that a formal written assignment isn’t the only way 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. But a mere expectation, hope, or conditional promise to transfer rights later is not.

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 the application is submitted. The SCA majority allows some flexibility by separating ownership from the right to apply. But the dissent shows this issue isn’t settled, so unclear contract wording is a risk applicants should avoid.