Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the application, seeking to crystallise PMS, would be able to overcome any problems within a reasonable time. The crystals he made would then inevitably be the crystals described in the patent in suit, and that the patent was invalid. Synthon now appealed the reversal of that decision by the Court of Appeal.
Held: The decision of Jacob J was restored. The Court of Appeal decision was difficult to understand as to whether they were directing their remarks at disclosure or enablement. The test for novelty is one of inevitable result.
Lord Walker said that although ‘the courts have shown an inclination to enrich the bare simplicity of the stautory text with their own explanatory commentary’, which ‘has over the years done much to clarify the abstract generalities of the statutes and to secure uniformity in their application’, the law of patents is in fact entirely statutory.
Lord Bingham of Cornhill, Lord Hoffmann, Lord Walker of Gestingthorpe, Baroness Hale of Richmond, Lord Brown of Eaton-under-Heywood
[2005] UKHL 59, [2006] RPC 10, [2006] 1 All ER 685
Bailii, House of Lords
Patents Act 1977 2(3)
England and Wales
Citing:
Cited – Hill v Evans HL 1862
The House considered what would amount to disclosure of an invention.
Lord Westbury LC said: ‘I apprehend the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would . .
Cited – IDA Ltd and others v University of Southampton and others; University of Southampton’s Applications Patc 28-Jul-2004
Disclosure and enablement are distinct concepts in patents law, each of which has to be satisfied and each of which has its own rules. As to sufficiency: ‘In my view, devising an invention and providing enabling disclosure are two quite different . .
Cited – Inhale Theraputic Systems Ltd v Quadrant Healthcare Plc PatC 20-Jun-2001
There may two forms of anticipatory disclosure of an invention subject to a patent application: a disclosure of the patented invention itself and a disclosure of an invention which, if performed, would necessarily infringe the patented invention . .
Appeal from – Synthon B V v Smithkline Beecham Plc CA 25-Jun-2003
. .
At first instance – Synthon Bv v Smithkline Beecham Plc ChD 9-Dec-2002
. .
At first instance – Synthon Bv v Smithkline Beecham Plc PatC 19-Jun-2002
. .
Cited – Merrell Dow Pharmaceuticals Inc and Another v H N Norton and Co Ltd; Same v Penn Etc HL 26-Oct-1995
A patent for a substance which had been produced naturally before the application of the process was invalid. The patent was invalidated after the discovery that the effect was produced naturally from an acid metabolite. Patent infringement does not . .
Cited – General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd CA 1971
Degree of Novelty Required before patent grant
The court set out the test for novelty required to be established before a patent could properly be granted: ‘To determine whether a patentee’s claim has been anticipated by an earlier publication it is necessary to compare the earlier publication . .
Cited – C Van Der Lely NV v Bamfords Ltd HL 1963
The pith and marrow doctrine on the construction of patents claims was ‘necessary to prevent sharp practice.’ As to the doctrine of enablement as explained by Lord Westbury: ‘Lord Westbury must have meant experiments with a view to discovering . .
Cited – Valensi v British Radio Corporation CA 1973
The court considered the test for deciding what degree of knowledge, skill and perseverance the skilled man was assumed to have as a ground for revocation of a patent on the associated basis. There had been a mistake in the specification of the . .
Cited – Asahi Kasei Kogyo KK’s Application HL 1991
The House considered a case involving the issue of enablement of a particular peptide in a patent application.
Held: On the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor common . .
Cited – Genetech Inc’s (Human Growth Hormone) Patent 1989
The court considered an enabling disclosure: ‘ . . what has come to be called an ‘enabling disclosure’, that is to say, one sufficient, in the case of a claim to a chemical compound, to enable those skilled in the art to make the compound claimed’ . .
Cited – Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
Cited – Windsurfing International Inc v Tabur Marine (Great Britain) Limited CA 1985
Testing Validity of a Patent
A patent was challenged where the windsurf board had been shown as a primitive prototype to have been built and used in public by a twelve year old boy. The court set out the four steps required to be taken when ascertaining the validity of a . .
Cited – Beloit Technologies Inc and Another v Valmet Paper Machinery Inc and Another ChD 12-May-1995
The judge urged that the Convention should be incorporated into English law without rephrasing difficult clauses: ‘it helps no-one for the Parliamentary draftsman to re-write matter in a treaty or convention (or EU directive for that matter) which . .
Cited – Mentor Corporation v Hollister Incorporated CA 1993
Lloyd LJ added to the guidance at first instance:
‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case.
But if a working definition is required . .
Cited by:
Cited – Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Cited – Les Laboratoires Servier and Another v Apotex Inc and others CA 9-May-2008
Appeal against finding that patent was invalid for lack of novelty, but that if valid the defendant’s product would have infringed it. . .
Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 23 January 2022; Ref: scu.231242