Pfizer Limited v Medimpex Jamaica Limited and another

Under the Patent Act 1857, novelty is assessed by reference to what was known or used in Jamaica. A prior foreign patent does not by itself prevent a Jamaican grant. Section 29 limits or invalidates the Jamaican patent where the applicant himself previously obtained the foreign patent. An absentee who instructs an attorney to apply on his behalf is the applicant, even where the attorney applies in his own name. The term attorney bears its ordinary meaning and includes a Jamaican attorney properly instructed to act. The difference between applying in the principal’s name and the attorney’s name is one of form, not substance. On that construction, expiry of the foreign patent invalidated the Jamaican patent in this case.

Pfizer had discovered amlodipine besylate and obtained an Egyptian patent for it. Maurice Robinson, a Jamaican attorney, later petitioned for and obtained a Jamaican patent, which he assigned to Pfizer for nominal consideration. The Egyptian patent had expired before the Jamaican patent was granted.

At trial, Jones J held the Jamaican patent invalid under section 29 without determining the capacity in which Robinson had applied. The Court of Appeal of Jamaica affirmed and additionally held that Robinson had acted as Pfizer’s attorney. The appeal concerned whether section 29 applied irrespective of the identity of the foreign patentee and whether Robinson was acting as Pfizer’s attorney within section 3.

Appeal dismissed. The Board advised Her Majesty accordingly.

1. Construction of section 29. Read as a whole, section 29 of the Patent Act 1857 limits the duration of a Jamaican patent, or renders it invalid, in the circumstances stated in its provisos. The references to any such patent and for which such patent refer back to the foreign patent identified in the opening words: a patent previously taken out by the Jamaican applicant. The Court of Appeal was therefore wrong to hold that the provisos applied irrespective of the identity of the foreign patentee.
2. Statutory context. The Act adopts local novelty, so an invention previously made available abroad may still be patentable in Jamaica. The Board accepted the meaning of section 25 of the United Kingdom Patent Law Amendment Act 1852 as summarised in In re Betts’ Patent (1862) 15 ER 621, but held that the materially different wording of that provision gave no real assistance in construing section 29. Sections 29 and 31 form a complementary scheme: an assignee applying under section 31 is treated differently from an applicant who has himself taken out the foreign patent.
3. Attorney and absentee. The term attorney in section 3 bears its ordinary meaning. It includes a person licensed to practise as an attorney in Jamaica and properly instructed to act for another; a power of attorney is unnecessary. An absentee means a person absent from Jamaica and unable to file the petition personally. Sections 4 and 7 support that interpretation.
4. Application in the attorney’s name. Where an attorney applies in his own name but for the principal’s benefit and on the principal’s instructions, the difference from an application in the principal’s name is one of form rather than substance. The principal is treated as the applicant for sections 3 and 29. Robinson had therefore applied as Pfizer’s attorney. Since Pfizer’s Egyptian patent had expired before the Jamaican grant, section 29 rendered the Jamaican patent invalid.

1. Privy Council. The Board rejected the Court of Appeal’s construction of section 29 but upheld the conclusion that Robinson applied as Pfizer’s attorney. The appeal was dismissed.
2. Court of Appeal of Jamaica. The court affirmed Jones J’s conclusion that the Jamaican patent was invalid under section 29 and held additionally that Robinson had acted as Pfizer’s attorney.
3. Trial (Jones J). Jones J found Robinson to be the true and first inventor in Jamaica but did not determine the capacity in which he had applied. He nevertheless held the patent invalid under section 29.