Synthon B.V v Smithkline Beecham Plc

Novelty under sections 2(1) and 2(3) of the Patents Act 1977 involves one statutory question: whether the claimed invention was made available to the public. A prior disclosure anticipates only if it gives clear and unmistakable directions to make or do what is claimed and is enabling. A merely possible result, or one obtained by selecting conditions from general teaching with knowledge of the later invention, is insufficient. The skilled reader cannot supply missing information through hindsight or further experiments. Where the only specific example fails to produce the claimed product, broad general statements will not ordinarily disclose it for novelty purposes.

SmithKline Beecham Plc owned a patent for crystalline paroxetine methanesulfonate. Synthon sought revocation, alleging that its earlier patent application formed part of the state of the art under section 2(3) of the Patents Act 1977.

Mr Justice Jacob held the patent invalid for lack of novelty and ordered revocation. The application contained a general disclosure of paroxetine salts and one specific experiment involving paroxetine methanesulfonate. The experiment produced a different crystalline form and was not repeatable so as to obtain the claimed form. The central issue on appeal was whether the application nevertheless made the claimed crystalline product available to the public through its general teaching.

1. Appeal allowed. Aldous LJ, with Sedley and Rix LJJ agreeing, set aside the revocation order and dismissed Synthon’s claim.
2. Sections 2(1), 2(2) and 2(3) of the Patents Act 1977 require the same novelty inquiry. The statutory question is whether the claimed invention was made available to the public. Section 2(3) does not create a special novelty test for earlier patent applications. Section 3 confirms that such material may attack novelty but cannot be relied on to attack inventive step or obviousness.
3. The court followed the approach in General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457. The prior publication must contain clear and unmistakable directions to do or make what the patent claims. An enabling disclosure is required. Where anticipation depends on an inevitable result, the claimed result must follow inevitably from carrying out the disclosure. A result that is merely possible, or equally likely to be avoided, is insufficient. The principles in Asahi Kasei Kogyo KK’s Application [1991] RPC 485, Hills v Evans (1862) 31 L.J. Ch 457 and Union Carbide T/396/89 were consistent with that approach.
4. The judge had wrongly treated novelty as depending on whether the two inventors had disclosed substantially the same invention at the same level of generality. The comparison had to be between the patent claim and the actual disclosure, not between the inventors’ inventions in substance. It was impermissible to select conditions from general teaching, with knowledge of the later invention, and use that adaptation to attack novelty.
5. The application did not specifically disclose the claimed crystalline form. Its sole specific experiment produced a different form and failed when repeated. Although later work produced the claimed form after altered conditions, that result depended on further experimentation and hindsight. The application therefore did not make the claimed product available to the public.

• Court of Appeal (Civil Division): [2003] EWCA Civ 861 allowed the appeal, set aside the revocation order and dismissed the claim.
• Chancery Division: Mr Justice Jacob held the patent invalid for lack of novelty and ordered its revocation.