Case: Smithkline Beecham plc's (paroxetine methanesulfonate) patent [2006] RPC 10
Outcome: referred to
principles to be applied in determining whether an invention was novel are comparatively settled. Courts both in Australia and the United Kingdom continue to view the principles as rooted in the decision of Lord Westbury in Hill v Evans (1862) 31 LJ Ch (NS) 457, 1A IPR 1. That decision has recently been described by Lord Hoffman as a judgment of unquestionable authority: Smithkline Beecham plc's (paroxetine methanesulfonate) patent [2006] RPC 10. Hill v Evans concerned disclosure and a patent for the purification of gas. Lord Westbury described the disclosure required in an earlier publication necessary to destroy a later patent for want of novelty, as involving a statement such that a person of ordinary knowledge of the subject would at once perceive, understand and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention could be made useful. His Lordship continued by saying that if something remained to be ascertained which was necessary for the useful application of the discovery, that provided sufficient room for another valid patent. The other English authority described by Lord Hoffman in Smithkline Beecham plc's (paroxetine methanesulfonate) patent as of unquestionable authority was the judgment of the Court of Appeal in General Tyre and Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457, 1A IPR 121. In that case the prior publications and patent concerned processes (or aspects of processes) for making a compound suitable for tyre treads by mixing synthetic rubber with oil and carbon black. The Court of Appeal indicated that if the prior inventor's publication contained a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim would have been shown to lack the necessary novelty. The prior inventor may have had a different starting point, but if the prior inventor's instructions were carried out and inevitably result in something being made or done which would constitute infringement of the patentee's claim, the patentee's claim would have been anticipated. The case considered by the House of Lords in Smithkline Beecham plc's (paroxetine methanesulfonate) patent concerned a patent for a compound, a crystalline salt. Somewhat simply described, the earlier publication concerned the same compound (though with different characteristics) and contained examples which, if skilfully manipulated in a way not described in the earlier publication, created the compound with the characteristics described in the patent in suit. The trial judge concluded the patent was not valid. This judgment was reversed by the Court of Appeal but reinstated by the House of Lords. Lord Hoffman gave the leading judgment. As noted in the headnote, the following emerges from his Lordship's judgment. The infringement had to be not merely a possible or even likely consequence of performing the invention disclosed by the prior disclosure. It had to be necessarily entailed. Anticipation necessary to defeat a patent for want of novelty required disclosure of subject-matter which, when performed, must necessarily infringe the patented invention. It was the requirement that the performance of an invention disclosed in the prior art must necessarily infringe the patent which distinguished novelty from obviousness. The performance of an invention disclosed by the prior art would not infringe the patent but the prior art would make it obvious to a skilled person how he might make adaptations which resulted in an infringing invention, then the patent might be invalid for lack of inventive step but not for lack of novelty.