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European IP Bulletin, Issue 27, November - Hot Topics
Hot Topics
1. House of Lords Clarifies Novelty in Synthon v Smithkline Beecham PLC
In this judgment, the House of Lords have clarified the approach which should be taken in assessing novelty, explaining why the concepts of disclosure and enablement must be considered separately, and highlighting the pitfalls of not doing so.
These proceedings arose from the near-simultaneous discovery of paroxetine methanesulfonate (PMS) by the appellants Synthon BV (Synthon) and the respondents, Smithkline Beecham Plc (SB)
Both parties filed patents relating to crystalline PMS. The SB patent had a priority date of 6 October 1998. Synthon challenged this patent as being anticipated by its earlier patent application, which had a priority date of June 1997. Synthon contended that the crystalline form of PMS described in Claim 1 of SB patent was not new, because it was disclosed in Synthon’s earlier patent application. As the Synthon application was not published at the time of the SB filing, Synthon could not rely on obviousness, only novelty.
At first instance Justice Jacob decided in favour of Synthon. The decision was taken despite inaccuracies in Synthon’s application, which made it impossible for the skilled man to make the product claimed in Synthon’s application without changing the described crystallisation procedures. SB contended that these inaccuracies did not constitute an enabling disclosure for the purposes of novelty, and whilst they could be a ground of obviousness, they could not be alleged by Synthon. However, Jacob J held that the inaccuracies were not material, and that a person skilled in the art could rely on his common general knowledge to supplement the prior art document. He held that there are two ways of proving anticipation: the “enabling disclosure” and the “inevitable result” route. The test to be applied is whether the two inventors have in substance reached the same invention because the primary purpose is to avoid double patenting. He held that both SB and Synthon disclosed the same invention at the same level of generality, and that Synthon got there first. The inaccuracies in the description of the method of crystallisation did not defeat the enablement of the invention in this case. Moreover, SB’s own patent claimed that the crystallisation process was part of common general knowledge.
The decision was overturned by the Court of Appeal, who considered that Jacob J had erred in holding that the invention was the same in both the prior application of Synthon and the SB patent. Moreover, the inaccuracies in the prior art document relied on by Synthon were of a material nature, which should not have been disregarded by Jacob J. Aggrieved with the decision, Synthon appealed. The House of Lords had to decide whether the inaccuracies in Synthon’s application precluded it from anticipating the SB application.
Lord Hoffman held that, in order to succeed in a claim of anticipation, a party has to satisfy two points. Firstly, that the application discloses the invention which is the subject matter of the patent in question, and secondly, that an ordinary skilled man would be able to reproduce the disclosed invention by using the disclosed matter and common general knowledge.
Lord Hoffman first addressed disclosure. Because the Synthon application disclosed the compound claimed in the SB patent, Lord Hoffman held that the claimed invention was clearly disclosed. The fact that the claimed compound was only one of a large number of compounds in the Synthon application was irrelevant. It was also held immaterial that Synthon had believed that they were making a compound different to that of the SB patent. Regardless of what Synthon believed, there is, in reality, only one form of crystalline PMS, and so the disclosure by Synthon of crystalline PMS was effective, even if the Synthon application went on to make incorrect statements about it.
Lord Hoffman then turned to the question of enablement. This assessed whether, having disclosed the invention, the prior art also enabled it, ie. did the Synthon application provide sufficient detail to enable the skilled person to make the compound. The judge at first instance had found, as a matter of fact that it did, deciding on the evidence that the skilled person would be able to overcome the errors in the Synthon application without difficulty.
The Court of Appeal had overturned this finding. However, as it was a finding of fact, Lord Hoffman pointed out that an appellate court should be reluctant to interfere with it. Lord Hoffmann did not believe that there were adequate reasons to do so, nor did he believe that the Court of Appeal had provided any such reasons. The other four Law Lords agreed, resulting in the Court of Appeal’s decision being overturned, and the SB patent application being held invalid for lack of novelty.
The judgment provides clarification on the differences between the concepts of disclosure and enablement, pointing out that whilst both must be present for the prior art to render a patent as lacking in novelty, they must be considered separately. In this case, the correct legal approach and an unusual set of facts resulted in a document which incorrectly described both the product and the process for making it, being nevertheless adequate to destroy the novelty of a subsequent patent.
A more detailed commentary of this case by Andrew Sharples and Duncan Curley will be appearing in EIPR in the coming months.
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