American Cyanamid Company v Ethicon Ltd

 
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[1975] UKHL J0205-1

House of Lords

American Cyanamid Company
(Appellants)
and
Ethicon Limited
(Respondents).
1

Upon Report from the Appellate Committee, to whom was referred the Cause American Cyanamid Company against Ethicon Limited, That the Committee had heard Counsel, as well on Tuesday the 12th, as on Wednesday the 13th and Thursday the 14th days, of November last, upon the Petition and Appeal of American Cyanamid Company of Berdan Avenue, Wayne, State of New Jersey 07470, United States of America, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 5th of February 1974, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioners might have such other relief in the premises as to Her Majesty the Queen in Her Court of Parliament, might seem meet; as also upon the Case of Ethicon Limited, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:

2

It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 5th day of February 1974, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Judgment of the Honourable Mr. Justice Graham of the 30th day of July 1973, thereby discharged, be, and the same is hereby, Restored: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.

[1975] UKHL J0210-1

House of Lords

Lord Reid

Lord Morris of Borth-y-Gest

Lord Guest

Lord Wilberforce

Lord Diplock

American Cyanamid Company
and
The Upjohn Company

Upon Report from the Appellate Committee, to whom was referred the Cause American Cyanamid Company against Ethicon Limited, That the Committee had heard Counsel, as well on Tuesday the 12th, as on Wednesday the 13th and Thursday the 14th days, of November last, upon the Petition and Appeal of American Cyanamid Company of Berdan Avenue, Wayne, State of New Jersey 07470, United States of America, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 5th of February 1974, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, or that the Petitioners might have such other relief in the premises as to Her Majesty the Queen in Her Court of Parliament, might seem meet; as also upon the Case of Ethicon Limited, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:

It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 5th day of February 1974, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Judgment of the Honourable Mr. Justice Graham of the 30th day of July 1973, thereby discharged, be, and the same is hereby, Restored: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.

Lord Reid

My Lords,

1

This appeal arises out of a Petition by the Respondents for the revocation of the Appellants' Patent No. 934853 on the grounds that (1) the complete specification does not sufficiently or fairly describe the invention or the method by which it is to be performed, (2) the scope of each claim is not sufficiently and clearly defined, and (3) no claim of the complete specification is fairly based on the matter disclosed in the specification. A further ground that the Patent was obtained on a false suggestion or representation is no longer maintained. The date of application in this country was 9th September, 1960; it followed an application in the United States of America on 15th September, 1969. The complete specification was published on 21st August, 1963.

2

The complete specification states that the invention relates to a new antibiotic, porfiromycin, and to processes for preparing the same. No question arises as to what precisely was the invention or as to the form of the claims which cover methods of producing the antibiotic and the antibiotic itself whenever produced by these methods.

3

It is stated in the specification that when certain strains of an organism streptomyces verticillatus are cultivated under controlled fermentation conditions this new antibiotic is produced. Full details are given as to how to identify these strains and as to how to carry out the process of production. It is not said that these are in any way insufficient. The controversy in this case arises from the fact that even the most skilled searcher might well fail to find these strains anywhere in the world, at least without good luck, and there is no suggestion that there is any known method of changing better known strains into these particular strains.

4

This gives rise to a new problem in patent law. The Appellants argue that the existing law only requires that the specification shall sufficiently describe the material to be used in the new manner of manufacture and the processes used in converting that material into the finished product. The Respondents argue that it has from early times been the law that as a consideration for obtaining his monopoly the patentee must make it possible for others skilled in the matter to produce the finished product commercially after the monopoly has expired and to conduct experiments during the monopoly period so that they can invent improvements.

5

When the starting material is not a living organism a sufficient description of it will almost inevitably enable others to buy it or to make it. But here that is not so. The organism will reproduce itself under suitable conditions, so the patentee has an unlimited supply from which to make the finished product. But no one else will ever be able to use the invention unless the patentee makes his strain of the organism available to others so that they too can create a supply by causing the reproduction of the organism made available to them.

6

This problem has arisen because since the discovery of penicillin much costly research has shewn that other micro-organisms can be made to produce a variety of products of great therapeutic value. But everything depends on getting the right organism to work with.

7

It appears that a practice has arisen of depositing useful strains in the American Type Culture Collection which we were informed is privately owned. The owners of the collection keep these strains alive and are prepared to make small quantities available on demand and no doubt on payment of a suitable charge. But they will not do that until authorised to do so by the depositor. It is stated in this specification that the strains with which this patent is concerned were deposited in that collection. But the Appellants did not authorise the Collection to make these strains available to others until a date much later than the publication of this complete specification.

8

The Appellants' first contention is that they were under no obligation to deposit their strains at all or to make them otherwise available. Alternatively they contend that if they were under any such obligation they complied with it by authorising the Collection to make the strains available at the later date. The Respondents contend that unless the strains are available at the time of publication of the complete specification the patent subsequently granted must be invalid and that the defect cannot be cured by making the strains available later.

9

I must first consider the far-reaching contention that there is no need under the existing law either to make the Appellants' strain available to others or to tell them where they can get it. Indeed it seems not improbable that if the possessor of an existing strain lost it he would not himself have any certainty of being able to find it again in nature.

10

After the enactment of the Statute of Monopolies in 1623 the development of the law was left to the Courts with few interventions by Parliament until 1883. It was soon decided that a patentee must do something to make it possible for others to carry out the manner of new manufacture after the monopoly had expired. At first it appears to have been sufficient if the patentee trained apprentices who could later carry out the method. But by the early eighteenth century it was required that he should disclose full particulars of his invention. If he did not do so anyone interested could seek repeal or revocation by writ of scire facias. A brief account of this writ is given in a footnote to R. v. Arkwright (1785) 1 Webster 64.

11

As time passed the Courts elaborated various grounds on which revocation could be sought. There was no statutory definition of these grounds until 1932 when a number were set out...

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