Novelty: House of Lords lays down the rules
The House of Lords has been particularly active in the patents field in the last couple of years. You might wait for ages for their Lordships to hear a patent case, and then along come three in quick succession, beginning with Kirin Amgen and SABAF. The latest in the trilogy is Synthon BV v SmithKline Beecham [2005] UKHL 59 in which the issue was whether a prior disclosure destroyed the novelty of an invention the subject of a later application.
Synthon filed a patent application, using the Patent Co-operation Treaty, on 10 June 1997. They claimed a broad class of sulphonic acid salts, including paroxetine methansulfonate, or PMS, and the specification described how to make it in crystalline form.
On 23 April 1999 – before the Synthon application reached the publication stage – SmithKline Beecham (SKB) filed a UK patent application that also claimed PMS. In the form in which it was granted, it identified the particular form of PMS claimed in the patent by reference to specific infra red (IR) and x-ray diffraction (XRD) peaks. The IR peaks were different to those in Synthon’s patent, and Lord Hoffman (who again gave the leading judgment in the Lords) remarked that a skilled person reading both documents would believe that they described two different crystalline forms, or polymorphs, of PMS.
Synthon applied to revoke the SKB patent, arguing that the form of PMS claimed in it was not new. The fact that the Synthon patent had not been published at the time SKB filed their application makes no difference – under section 2(3) of the Patents Act 1977 it still formed part of the state of the art, though SKB could not have known about it. So was it what is referred to as an ‘enabling disclosure’?
Synthon had to show two things to succeed in their revocation action: first, that their earlier application disclosed what was in the SKB patent, and second that the disclosure was sufficient – that it would enable a skilled person to perform the invention. The first stage was difficult enough: Synthon’s case was based on a mistake about the IR readings in its patent, and in addition it seemed to be likely that PMS was monomorphic, not polymorphic. Jacob J had held at first instance that these defects were not fatal to Synthon’s case: if the skilled person set out to perform the invention and make PMS according to the Synthon patent, the result would be what the SKB patent disclosed even though he or she had thought they were making something different.
As for the enablement requirement, the problem here was that the Synthon patent used an unsuitable solvent. Jacob J accepted Synthon’s argument here as well, that the skilled reader of the patent would try various solvents if the one specified in the patent did not do the trick, and within a reasonable time would make PMS.
The Court of Appeal allowed SKB’s appeal, and Synthon appealed to the House of Lords, which allowed its appeal. Lord Hoffman considered that their Lordships should be reluctant to overturn a finding of fact by such an experienced judge. In their analysis of the law, their Lordships highlighted the serious risk of confusion that can arise if the distinction between disclosure and enablement is not recognised. They are, Lord Hoffman said, distinct concepts, each of which has to be satisfied and each with its own rules.
In particular, the different rules prescribe different roles for the skilled person. In considering whether there has been disclosure, the skilled person’s general knowledge is taken into account when the patent is construed, but once it is construed the skilled person plays no further part; in relation to enablement, the skilled person must be able to make the invention work and must be assumed to be willing to try out different experiments to achieve this.
For an item of prior art to amount to a disclosure of an invention , Lord Hoffmann observed that if performed it must necessarily result in an infringement of the patent. There is no need for the person working the invention to be aware that an infringement is being committed (Merrell Dow v Norton[1]) so the disclosure condition can be satisfied even if the person who created the prior art was unaware that it would infringe the patent. So did Synthon’s patent application disclose an invention which, if performed, would infringe the SKB patent?
Because the trial judge had found that the PMS crystal was monomorphic, Lord Hoffmann was in no doubt that the crystal disclosed in the Synthon patent had all the characteristics of the crystals claimed in the SKB patent. The inaccurate disclosure of the IR spectrum was irrelevant: because there was only one form of the crysttal, this part of the specification was superfluous. The skilled person might be puzzled to find that the IR spectrum differed from what the patent taught, but the crystals would still infringe.
As for enablement, Lord Hoffmann explained that this condition would be satisfied when the ordinary skilled person would be able to perform the invention, satisfying the requirement of disclosure. Here, the disclosure was to crystalline PMS and the information about the IR spectrum was irrelevant, and as noted above Lord Hoffmann saw no reason to differ from the view of the trial judge.
In this important case, the House of Lords has settled the principle that disclosure and enablement are distinct matters – though Lord Walker noted in his judgment that how far distinct will vary from case to case, and with a simple technology a basic disclosure may well enable the skilled person to perform an invention. It has also made clear that the test of enablement would be the same whether the question under consideration concerned sufficiency or anticipation. It is also noteworthy that, when considering what is in the prior art, it is the substance of the disclosure that has to be considered, not how it is characterised: the false IR spectrum information did not change what it was that the patent protected.
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