Beecham Group Plc v Gist-Brocades NV
| Jurisdiction | England & Wales |
| Judge | Lord Fraser of Tullybelton,Lord Diplock,Lord Bridge of Harwich,Lord Brightman,Lord Templeman |
| Judgment Date | 31 July 1985 |
| Judgment citation (vLex) | [1985] UKHL J0731-1 |
| Date | 31 July 1985 |
| Court | House of Lords |
[1985] UKHL J0731-1
House of Lords
Lord Fraser of Tullybelton
Lord Diplock
Lord Bridge of Harwich
Lord Brightman
Lord Templeman
My Lords,
I have had the advantage of reading in draft the speech of my noble and learned friend, Lord Diplock. I agree with the reasons he has so fully and clearly explained for the declarations and orders that were made by the House on 31 July 1985.
But I wish to reserve my opinion on one matter to which he has referred. That is the question whether the comptroller, when he settles the terms of a licence as of right, as he is authorised to do under section 46(3)( a) of the Patents Act 1977, has power to incorporate whatever limitations he thinks proper. That seems to me to be a difficult question, and it is one that we do not have to answer now. For disposal of these appeals it is enough to decide whether the comptroller has power to include a term prohibiting or limiting imports into the United Kingdom of a patented product or a product obtained by a patented process. For the reasons given by my noble and learned friend, I agree that that question should be answered in the affirmative.
The late Lord Diplock's speech is available in print and it follows immediately.
My Lords,
In these conjoined appeals and cross-appeals this House made on 31 July 1985 a series of declarations and orders in so far as the proceedings in the courts below raised questions of construction of the national patent law of the United Kingdom which did not also involve questions of interpretation of the E.E.C.Treaty. The House ordered that certain specific questions as to interpretation of that treaty be referred to the European Court of Justice under article 177.
This House proceeded with all possible expedition, as also had the Court of Appeal; but the fact that the appeals to your Lordships' House are brought in two separate proceedings that are not of the same legal character, were decided by judgments of differently constituted courts of appeal and were not conjoined until the eleventh hour to form a somewhat confused amalgam, has added to the difficulty of devising a well-structured analysis of the diverse issues in the two sets of proceedings and of the reasons why such an analysis leads to the necessity of making those orders which this House has already made.
The Patent Act 1977 ("the Act of 1977") was passed in order to enable the United Kingdom to ratify the European Patent Convention and to observe its terms. That Convention was made on 5 October 1973. It provided for the grant by a European Patent Office of European patents which are to be given in each state designated by the applicant in his application the same effect as national patents granted by that state. It provides that the period of any European patent shall be 20 years instead of 16 years which it had previously been in the United Kingdom for national patents by virtue of section 22(3) of the Patent Act 1949 ("the Act of 1949"). The extended period of 20 years was incorporated in the national law of the United Kingdom by section 25(1) of the Act of 1977, but that provision applies only to patents for which the application was filed after the coming into force of the Act.
The European Patent Convention by article 142 had made provision for special agreements to be entered into between groups of states for a European patent to be unitary, that is to say to have effect in all states in the group as if it were a national patent granted by that state itself. In December 1975, the nine member states of the European Economic Community as it was then constituted entered into such a group agreement, the Community Patent Convention. This Convention has not yet come into force, but the nine member states by a resolution annexed to the Convention undertook to bring their national laws as soon as possible into conformity with corresponding provisions of the European Patent Convention and the Community Patent Convention. The Act of 1977 contains provisions which are intended to do this, particularly those provisions which are referred to in section 130(7).
The operation of the European Patent Convention is limited to patents for which application was first made after the European Patent Office was opened in Munich on 1 June 1978 and the operation of the Community Patent Convention when that Convention does come into force will be likewise restricted to patents for which application will have been made thereafter. Neither Convention places any restriction upon national law as respects patents (referred to in the Act of 1977 as "existing patents") which had been granted or for which application accompanied by a full specification had been filed before 1 June 1978, the date on which the European Patents Office opened. If there be restrictions upon the effect given to existing patents in member states of the E.E.C. before the Community Patent Convention comes into force, such restrictions are imposed by the E.E.C. Treaty itself.
The Act of 1977, however, does contain provisions dealing with existing patents that are so convoluted as to warrant the description cryptic. Their interpretation has given rise to differences of judicial opinion in the courts below. Existing patents the Act divides into two categories "old existing patents" and "new existing patents". The former, with which your Lordships are not concerned, are patents the date of which fell 11 years or more before I June 1978 i.e. before 1 June 1967. These do not have their period extended automatically from 16 to 20 years. New existing patents are those the date of which fell after 1 June 1967. These do have their period extended automatically from 16 to 20 years, but subject inter alia to the condition that licences of right shall be available during the extended period. For the oldest patents in this category the four-year extension started on a date in 1983, for the most recent the extension will not begin until 1994. It is with the consequences of such extensions and the rights of the patentee and would-be licensees during the four-year period that these appeals are concerned. Your Lordships' decisions in these appeals will thus affect a large number of patents over a substantial period of time.
The appeals and cross-appeals that are presently before your Lordships are brought in what started as two separate proceedings which were not of the same legal character. One, in which Allen & Hanburys Ltd. ("A.H.") was the plaintiff was a civil action brought against Generics (U.K.) Ltd. ("Generics") for infringment of a new existing patent of which the original 16 year period had expired on 15 September 1983; the other was an application by a Netherlands company Gist-Brocades NV. and its U.K. subsidiary Brocades (Great Britain) Ltd. (together referred to hereafter as "Brocades") under R.S.C., Ord. 53 for an order of mandamus to the Comptroller-General of Patents to compel him to set in train immediately the procedure for the settlement by him of the terms of a licence of right under a new existing patent the 16 year term of which would not expire until 20 August 1985 and of which Beecham Group Plc ("Beecham") are the patentees. Brocades' application to the comptroller to begin to settle the terms of such a licence had been made to him on 28 December 1984, i.e. nearly eight months before the licence of right could take effect. He had refused to do so until the original 16 years of the patent had expired.
The different legal character of the two sets of proceedings will need to be reflected in the form of the orders made by this House in disposing of the various appeals and cross-appeals in each of them but both sets of proceedings raise the same questions of law both as to the construction of those provisions of the Act of 1977 which deal with the extension of the period of new existing patents from 16 to 20 years and also as to the effect on those provisions of the E.E.C. Treaty and in particular, though it may not be exclusively, of articles 30 and 36 of that Treaty. In each set of proceedings, the subject-matter of the patent is a well-known and highly successful pharmaceutical product. The patents also cover processes for producing those products but with the processes your Lordships are not concerned. A.H.'s patent is for salbutamol, best-known under its brand name Ventolin, which is used to relieve asthma and other breathing disorders. Beecham's patent is for amoxycillin, a wide spectrum antibiotic of which the commonest use is to relieve bronchitis. Generics seek a licence of right to import salbutomol from Italy during the four-year period of the extension of A.H.'s patent; while Brocades intend to seek a licence of right to import amoxycillin from the Netherlands during the four-year period of extension of Beecham's patent which had not yet started when Brocades' application was made to the comptroller to put in train proceedings to settle the terms of such a licence.
In A.H.'s action Falconer J. took the view that upon the true construction of the Act of 1977 Generics if they imported salbutamol from Italy would be infringers of A.H.'s patent and would continue to be so unless and until a licence of right in terms settled by the comptroller which permitted importation from Italy was obtained by Generics. The judge gave A.H. summary judgment for an injunction restraining Generics from such importation. Although such injunction would come to an end if the comptroller did in fact eventually settle terms of a licence which authorised such import ( Hoffman-La Roche & Co. A.G. v. D.D.S.A....
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