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Thursday, 20 October 2005


While the Court of Appeal was busily giving its ruling in Oakley v Animal (see previous blog), the House of Lords - the highest court of appeal in the United Kingdom - was giving its decision in the patent dispute of Synthon BV v Smithkline Beecham plc [2005] UKHL 59. Their Lordships, for whom Lord Hoffmann delivered the speech, allowed Synthon's appeal and, reversing the decision of the Court of Appeal, restored the decision of trial judge Mr Justice Jacob.

This case is all about a patent for paroxetine salt belonging to Smithkline. Synthon said it was invalid because the invention contained in it was effectively disclosed by the content of an earlier patent application. Jacob J agreed; the Court of Appeal said the patent was not anticipated because the earlier patent disclosure did not give "clear and unmistakable directions to make the invention". The House of Lords, after a fairly thorough examination of existing case law and the circumstances of this case, sided with the trial judge.

The IPKat's little brain is still digesting Oakley v Animal and he hasn't got a "take" on this case yet but, if anything occurs to him, he'll post it on this blog. Meanwhile, he leaves you with Lord Hoffmann's words on "enabling disclosure", which seem to sum the position up most magisterially:

"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 grounddriven 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 1,71)".

1 comment:

Anonymous said...

Actually, Lord Walker said what you quote. Lord Hoffmann emphasised that enablement and disclosure are two separate requirements which need to be examined separately and must not be confused.
Darren Smyth

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