And an Application by American Cyanamid Company for Letters Patent 1, 345, 289 and Another

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLORD JUSTICE BUCKLEY,LORD JUSTICE SHAW,LORD JUSTICE BRIGHTMAN
Judgment Date12 March 1980
Judgment citation (vLex)[1980] EWCA Civ J0312-5
Date12 March 1980
Docket Number13 and 16/1978

[1980] EWCA Civ J0312-5

In The Supreme Court of Judicature

Court of Appeal

(Civil Division)

On Appeal from The High Court of Justice

Chancery Division

Patents Court

(Mr. Justice Whitford)

Before:

Lord Justice Buckley

Lord Justice Shaw and

Lord Justice Brightman

13 and 16/1978

In the Matter of the Patents Act 1949

And in the Matter of an Application by American Cyanamid Company for Letters Patent 1,345,289
And in the Matter of an Opposition thereto by J. D. Campbell and Sons Limited

MR. STEPHEN GRATWICK Q. C. and MR. J. R. MARTYN (instructed by Messrs. Needham & Grant, Solicitors, London W. C.2) appeared on behalf of the Opponents (Appellants).

MR. D. W. FALCONER Q. C. and MR. DAVID YOUNG (instructed by Messrs. Allen & Overy, Solicitors, London E. C.2) appeared on behalf of the Applicants (Respondents).

LORD JUSTICE BUCKLEY
1

This is an appeal from a decision of Mr. Justice Whitford sitting in the Patents Court on 16th November 1978 in opposition proceedings under section 14 of the Patents Act, 1949, in which he held that claim 1 of the application in suit in a proposed amended form was not anticipated within section 14(l)(b) of the Act by an earlier patent of the applicants, and was not obvious and clearly lacking any inventive step within section 14(1)(e) of the Act. The opponents appeal, with the leave of the judge, on both points. The application is for a grant of Letters Patent relating to a method of protecting crops from attack by two types of pest, namely Coleoptera and Diptera, in that post-embryonic stage of their development during which they live in the soil.

2

The claim under consideration refers to two chemical compounds with long, complicated names, with only one of which we are directly concerned; this has been called in the course of argument TBP, standing for T-butyl-phorate, and I shall so describe it; the other I shall refer to as TAP.

3

In the proposed amended form in which it was considered by the judge, claim 1 of the application reads as follows: "A method for protecting crops susceptible to attack by the post-embryonic development stages of Coleoptera and Diptera inhabiting the soil from such attack, characterized by the provision in the soil in which said crops are growing or in which seeds of said crops are planted, of a toxic amount of a compound selected from" TBP and TAP "by the application of such toxic amount at or about the time of planting of said seeds or crops …s".

4

The opponents claim that the claim in that form was anticipated in an earlier United Kingdom patent, No. 676776, publishedin August of 1952, which I shall call "the Hook patent", Hook "being the name of the inventor, or one of the inventors, of the invention to which that patent related.

5

The Hook patent, as stated in its complete specification, which is at page 28 of volume I of our documents, related to the preparation of di-thiophosphoric acid triestera, and to insecticidal compositions containing the same. After describing how the chemical compounds of the invention are produced, the complete specification went on to state, on page 7 of the specification which is page 34 of our documents, that "Many of the compounds of the present invention are highly active insecticides and may be used as sprays in organic solvents, as emulsions in water or other non-solvents, or on solid carriers such as clays, talc and diatomaceous earths". The specification then proceeded to give examples of what it calls the marked activity of the products as insecticides and refers specifically by way of illustration to eighteen forms of pest, none of which in fact inhabits the soil. At page 9 (our bundle, page 36) at line 87, there is a passage which states that these new insecticidal compounds may also be used in combination with certain other insecticides, with fungicides and - and these words are, I think, of considerable importance - with various types of plant foods and fertilizers.

6

Claims 1 to 5 are all claims to methods of making the chemical compositions; claim 6 is to the chemical products of those methods; claims 7, 8 and 9 are to insecticidal compositions comprising a carrier and, as a toxic ingredient, one or other of the claimed chemical compositions. One of the chemical compositions of the Hook patent was TBF; another was a composition shortly described as ethylphorate, to which I shall refer as "EF".

7

The applicants have, since 1962, manufactured and marketed under the trade name "Thimet" an insecticide of which the toxic element consisted of EP. They met with considerable success and by 1970 this product was widely used. The marketed product was found to have systemic qualities; that is to say, the toxic materiel, was carried by a process called translocation from the soil into the body and foliage of the plants so as to be capable of destroying pests which attacked and ate the plants. This quality, however, was not known to exist in EP in 1952 when the complete specification of the Hook patent was published. Professor Jepson, the leading technical witness for the applicants, says in paragraph 12 of his first declaration, on page 36 of volume II of our bundle: "…s it became common general knowledge in about 1954 that the compound of the patent chosen for commercialisation viz Phorate" - that is the EP compound of the Hook patent - "owed its good insecticidal properties primarily because it possesses a systemic action i. e. the compound passes first into the plant and then into the bodies of the insects". No reference is made in the Hook specification to translocation of the toxic ingredients or to any systemic operation of the insecticides of that invention. In view of the statutory obligation of an inventor to give, in his complete specification, a particularised description of his invention, in my judgment that silence in the present case is significant.

8

The applicants obtained a 4½ year extension of the Hook patent on the strength of the discovery of the systemic qualities of their EP product. The Hook patent expired in 1969 and a corresponding United States patent expired in 1972. In 1972 the applicants filed their application in suit; it was publishedin January 1974 and the present opposition proceedings ensued in April 1974.

9

The first hearing in the Patent Office took place in October 1976. Claim 1 of the application was then in the following terms: "A method for the control of the post-embryonic development stages of Coleoptera and Diptera inhabiting the soil, characterized by applying to said soil a toxic amount of a compound selected from" TBP and TAP. The superintending examiner held that the Hook patent...

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