Judgments - Synthon BV (Appellants) v. Smithkline Beecham plc (Respondents)

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    53.  The main reasons for the Court of Appeal's rejection of the judge's finding of fact appear from para 56 of the judgment of Aldous LJ:

    "The crucial question was not whether the skilled addressee would expect success, but whether the application made available PMS as claimed. There was no attempt to ask Mr Ward whether there were directions in the application which, if followed, would produce the claimed form of PMS. No doubt that was because the answer would have been 'No'. Once it had been established that example 1 did not disclose a successful route to PMS as claimed in the patent, the skilled addressee might have adopted obvious modifications. But such an approach is not permissible when considering novelty."

    54.  This passage again suggests to me a serious confusion between disclosure and enablement. The evidence of Mr Ward was relied upon solely for the purpose of proving enablement. But the reference at the end to "obvious modifications" being impermissible is a reference to the requirement that the prior art must have planted the flag on the patented invention, which is a principle of disclosure. On that question Mr Ward's evidence about making crystals could have nothing to contribute.

    55.  Paragraph 56 again leaves me in doubt about whether the Court of Appeal thought that the prior art did not disclose the invention or whether it did so but was not enabled. If it was the former, then, as I have said, I think that they were wrong. If it was the latter, then I do not think that they have offered adequate reasons for disturbing the judge's finding of fact. I would therefore allow the appeal and restore the decision of Jacob J.

LORD WALKER OF GESTINGTHORPE

My Lords,

    56.  I have had the privilege of reading in draft the opinion of my noble and learned friend Lord Hoffmann. I agree with it and for the reasons which he gives I would allow this appeal. I add some brief comments of my own which are no more than footnotes.

    57.  The law of patents is wholly statutory, and has a surprisingly long history. It has been wholly statutory since the Statute of Monopolies 1623, an important landmark in constitutional history because of its effect in curbing the royal prerogative. It is a field of law in which statutory change (although important in its cumulative effect, especially in reflecting international treaty obligations) has been a process, not of revolution, but of slow evolution. Bankruptcy law and, until recently, the law of rating are comparable in this respect. In these fields the courts have shown an inclination to enrich the bare simplicity of the statutory text with their own explanatory commentary. But from time to time this process is interrupted by periods of reappraisal. In the law of patents the doctrine of "pith and marrow" is one example of such a reappraisal: see C Van der Lely NV v Bamfords Ltd [1963] RPC 61, 75, 77, 79, 80. Another example is the so-called protocol (or Improver) questions: see Improver Corp v Remington Consumer Products Ltd [1990] FSR 181, 189 and the recent decision of this House in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 169, 191 (para 52). This sort of judicial exposition is more than what the old cases called glossing the statute. In the interpretation and application of patent statutes judge-made doctrine has over the years done much to clarify the abstract generalities of the statutes and to secure uniformity in their application.

    58.  Nevertheless it is salutary to be reminded, from time to time, that the general concepts which are the common currency of patent lawyers are founded on a statutory text, and cannot have any other firm foundation. The concepts which Lord Hoffmann addresses in his opinion are "disclosure" and "enablement". He emphasises that these are distinct concepts, each of which has its own function and rules. Nevertheless the composite expression "enabling disclosure" (which originated, it seems, in the United States of America) has been in frequent use in this country for at least fifteen years. One of the first reported instances may be found in the judgment of Falconer J in Genetech Inc's (Human Growth Hormone) Patent [1989] RPC 613, 629:

    "… 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"

    This passage was referred to and approved by Lord Oliver in Asahi Kasei Kogyo KK's Application [1991] RPC 485, 539. It is worth looking to see how this composite expression is derived from, and fits in with, the statutory provisions.

    59.  The most relevant provisions of the Patents Act 1977 are sections 1, 2, 3, 5 and 14. Section 72 (Grounds for revocation of a patent) is also relevant but only as confirmation of the substance of the earlier sections. The effect of section 1 (1)(a) and (b) is that a claimed invention will not be recognised as such unless it is (a) new and (b) involves an inventive step. These requirements (whose negatives are generally labelled as "anticipation" and "obviousness") are spelled out in sections 2 and 3 of the Act.

    60.  Section 2 defines novelty in negative terms of not being part of "the state of the art" (in other words a claimed invention lacks novelty if it already forms part of the state of the art) and section 3 defines an inventive step in terms of not being obvious, but with a qualified reference to the state of the art:

    "An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above)."

    The reader is thus sent back to section 2(2) and (3):

    "(2)  The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.

    (3)  The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say -

    (a)  that matter was contained in the application for that other patent both as filed and as published; and

    (b)  the priority date of that matter is earlier than that of the invention."

    61.  Section 5 relates to priority dates, and refers to an invention being "supported by matter disclosed" in an earlier application, wording which is (at the lowest) consistent with the concept of enabling disclosure. Section 14 relates to applications for patents. By sub section (2) an application must contain (among other things):

    "a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim."

    Sub section (3) provides:

    "(3)  The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art."

This subsection does not actually use the expression "enabling disclosure" but it comes far closer to it than any other statutory provision. It is clear beyond argument that the specification in a patent application must contain an enabling disclosure in the sense in which that expression has been used by the court at latest since Genetech in 1989.

    62.  One of the issues which arose in the past is how far enabling disclosure is to be regarded as implicitly required in statutory provisions expressed in different terms from section 14, that is in the concept of the state of the art, which is of central importance to section 2 (anticipation) and (in a modified form) section 3 (obviousness). Where the state of the art consists of claims in existing patent specifications the material in those claims will almost by definition contain an enabling disclosure - that is the disclosure of something which is indeed an invention, together with a sufficiently clear and complete description of the invention to enable it to be performed by a person skilled in the art. The same will be true of material disclosed in claims in patent applications. But the state of the art has a much wider range of meaning. As well as material contained in introductory or narrative parts of patent specifications or in technical publications it can include non-technical matter such as the illustrated magazine articles in Van der Lely or the primitive prototype windsurfing board built (and used in public) by a twelve year old boy in Windsurfing International Inc v TaburMarine (Great Britain) Ltd [1985] RPC 59.

    63.  What emerges from the authorities, to my mind, is that enabling disclosure is a compendious summary of two distinct statutory requirements, which arise (as a pair) in two different statutory contexts: explicitly in section 14 (requirements for a patent application) and implicitly (as decided by the Court of Appeal in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 and by this House in Asahi) in determining the state of the art, whether for the purposes of anticipation (section 2(2) and (3)) or obviousness (section 2 as restricted by section 3). This produces a degree of symmetry in the law and avoids divergence from the practice of the European Patent Office.

    64.  Nevertheless the expression must be handled with some care. The practical importance of keeping the two requirements distinct will vary with the factual situation. In the case of a low-tech invention (for instance a simple agricultural machine such as the hay rake with ground-driven wheels in Van der Lely) the simple disclosure of the invention will probably be enough to enable the skilled person to perform it. By contrast in the case of a high-tech invention in the field of pharmaceutical science the bald assertion of the existence of the invention may have to be accompanied by detailed disclosure enabling the skilled person to perform it. But in testing the adequacy of the enablement it may be assumed that the skilled person will have to use his skill, and may have to learn by his mistakes (see Lord Reid's reference to "trial and error" in Van der Lely [1963] RPC 61,71).

    65.  I respectfully concur in Lord Hoffmann's analysis of all the factual issues raised in this appeal. I agree that the appeal should be allowed and the order of Jacob J restored.

BARONESS HALE OF RICHMOND

My Lords,

    66.  I am most grateful to my noble and learned friend, Lord Walker of Gestingthorpe, for his explanation of how it comes about that the "state of the art" involves both disclosure and enablement. I am also most grateful to my noble and learned friend Lord Hoffmann for his exposition of how those separate concepts of disclosure and enablement should be applied to the facts of this case. For the reasons that they give, I too would allow this appeal.

LORD BROWN OF EATON-UNDER-HEYWOOD

My Lords,

    67.  I have had the privilege of reading in draft the opinions of my noble and learned friends Lord Hoffmann and Lord Walker of Gestingthorpe. I agree with them both and would, for the reasons given by Lord Hoffmann, allow the appeal and restore the decision of Jacob J.

 
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