placeholder-image coin

Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005)

Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005)


Citation:Synthon BV v. Smithkline Beecham plc [2005] UKHL 59 (20 October 2005)

Link to case on WorldLII.

Rule of thumb:What is the fundamental test for obtaining a patent? The test is ‘inventive step’ by an expert in the industry, which goes beyond mere ‘novelty’ or highly skilled & methodical at applying the invention well.

Background facts:

The basic facts of this case were that a salt called Paroxetine was created, which would be used to treat depression, and a new form of administering this was created.

Parties argued:

It was argued that this patent should be refused on the basis that there was already a similar patent registered and this development was obvious.

Judgment:

The Court set the test that it was not whether ‘the reasonable man’ would consider the development obvious but whether the ‘notional skilled reader’ would consider the development obvious. The Court held that the use and method of using the invention which a new patent was being applied for was not stated in the original patent application, and that the new use was patentable. The Court emphasised the importance of people putting in full and comprehensive patent applications if they wanted to have a wide use of the product.

The wording of the patent applications in considering how far into ‘new’ products the wording of a patent extends is an important consideration for the Court. The Court held that developments that from a patent that would be obvious to a person skilled in the field do not have to be listed in a patent application. The Court did however emphasise that where someone states a novel development of their product that it looks to extend to, but an ‘inventive step’ is needed to reach this position and it is not included within the patent application, then this is not included within their application – this would have ‘novelty but not an inventive step’.

centered image

Ratio-decidendi:

‘... the infringement must not merely be a possible or even likely consequence of performing the invention disclosed by the prior disclosure; it must necessarily be entailed. If there is more than one possible consequence, one cannot say that the performing the disclosed invention will infringe... If performance of an invention disclosed by the prior arts would not infringe the patent by the prior art would make it obvious to a skilled person how he might make adaptations which resulted in an infringing invention, the patent may be invalid for lack of an inventive step but not lack of novelty’, Lord Hoffman

Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.