F Hoffmann La Roche & Company AG v Inter Continental Pharmaceuticals Ltd; JR Geigy SA v Inter Continental Pharmaceuticals
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE HARMAN,LORD JUSTICE DIPLOCK,LORD JUSTICE RUSSELL |
| Judgment Date | 25 February 1965 |
| Judgment citation (vLex) | [1965] EWCA Civ J0225-1 |
| Docket Number | 1964. F. No. 1804. |
| Court | Court of Appeal |
| Date | 25 February 1965 |
[1965] EWCA Civ J0225-1
In The Supreme Court of Judicature
Court of Appeal
Appeals from Orders of Mr Justice Lloyd-Jacob dated 3rd December 1964 and 36th January 1965.
Revised
Lord Justice Harman
Lord Justice Diplock and
Lord Justice Russell
Mr KENNETH JOHNSTON, Q. C., and Mr ANTHONY WALTON (instructed by Messrs Herbert Smith & Co.) appeared on behalf of the Appellants (Plaintiffs) in the first appeal.
Mr KENNETH JOHNSTON, Q. C., Sir JOHN HOBSON, Q. C., and Lord CAWLEY (instructed by Messrs Gregory, Rowcliffe & Co., Agents for Messrs Addlesham, Sons & Latham, Manchester) appeared on behalf of the Appellants (Plaintiffs) in the second appeal.
Mr RHYS G. LLOYD, Q. C., and Mr. A. KYNRIC LBWLS (instructed by Messrs Theodore Goddard & Co.) appeared on behalf of the Respondents (Defendants) in the first appeal, and (instructed by Messrs Herman, Isaacs, Lewis & Mills) in the second appeal.
We do not want to hear you in reply, Sir John.
These are two motions which we have heard together because they are of a kindred nature. The reapondent in each case is the same. The plaintiffs are different. Both motions are concerned with the practice of Mr Justice Lloyd-Jacob, the judge in charge of patent matters in the Chancery Division, of which he makes no secret, namely, that in cases which fall within section 41 of the Patents Act 1949 (that la to say, cases concerned with patents for protecting food and drugs) he is disinclined to grant interlocutory relief to plaintiffs. He therefore starts with this, that unless some special and compelling reason is put forward, interlocutory relief will not be granted. Indeed, the learned judge, true to his own process of reasoning, has decided in one case to defer the grant of a final injunction pending the Comptroller General's decision on whether to grant a compulsory licence.
The facts it is not necessary to state in detail. The plaintiff in the first case is a. company incorporated in Switzerland dealing in drugs and operating through a wholly owned subsidiary incorporated in this country. The defendants are Inter-Continental Pharmaceuticals Limited, recently Incorporated in England in a modest way of business, who are distributors of drugs in this country. They do not manufacture or do anything but import and sell to wholesalers in this country.
This case is connected with a drug sold by the plaintiffs under the trade name of LIBRIUM, a constituent of a kind of tablet or capsule known, I am told; as a tranquillser, and which contains a drug called chlordiazepoxide. This drug is the subject-matter of a patent in England (a Convention patent, I think) of which the plaintiffs are the registered proprietors.
The matter starts with a request by the defendants to the plaintiffs made in April 1964 for a licence, not to manufacture, I gather, but to import. That request was refused in September 1964, whereupon the defendants applied, as they were entitled todo to the Comptroller General of Patents for a compulsory licence under section 41 of the Act. This they did on the 30th September. On the next day, the 1st October, without waiting to see what the result of that might be, they made an offer for sale, issued a catalogue of the goods which they had on offer (which included this particular drug) and included it amongst their list of sedatives as a tranquiliser. An order was immediately placed by the plaintiffs' subsidiary in this country, and on the 23rd October the drug was delivered. Thereupon, on the 27th October, a writ was issued accompanied by a notice of motion for an interlocutory injunction. There was a preliminary hearing of the motion early in November when the learned judge required further evidence about the standing of the defendants and the conditions under which they imported the drug. In the meantime, on the 30th November, the Jociptroller wrote a latter (which, as we shall see, is a step in the proceedings under section 41) saying that prima facie the defendants, as persons interested, would be entitled in due course 10 a compulsory licence.
The action was heard in December, and the learned judge wfused an injunction. When the defence was delivered, which was Iso in December, it appeared that the validity of the patent was not put in issue, nor was infringement denied. The defendants, therefore, relied on two points, first the more general one that in this kind of case damages was the proper remedy, and not an junction at all, and that no interlocutory relief ought to be ranted. The second one depends on the construction of the Act, and is that the Comptroller, upon an application under section 41, as power, so to speak, to ante-date the licence, and by a stroke of the pen to turn that which has been an infringement over hatever the period may be into an authorised activity after the ate of the application to him, and, therefore, that no injunction light to be granted because it might prove in the end retrospecively that the defendants were not at fault. That is how the first case stands.
In the second case the plaintiffs' name is again that of a Swiss company. The defendant la the same company as in the first case, Inter-Continental Pharmaceutical Products Limited. The plaintiffs operate through a holding company in this country and four dealing companies, and they (the plaintiffs) are the registered proprietors of a patent for a substance called 1mi-pramine hydrochloride, which they market in this country under the trade name TOFRANIL, a specific, I understanding cases of melancholia. This is a patent which has been on the market for a number of years, and will expire in the year 1966. As to this drug, the defendants informed the plalntiffs on the 23rd August 1964 that they intended to put it on the market. At the end of the month the plaintiffs drew the defendants' attention to the patent, and on the 5th October the defendants said that they were proposing to go into the market with this drug in the teeth of the patent, and asked for a licence to do so, which was refused them on the 24th October of last year, whereupon, on the 4th November, the defendants applied under section 41 for a compulsory licence. Again on the 9th November they jumped the gun and did not wait for the licence, but started to advertise these goods for sale, and have sold them ever since except for some intermission which there was under pressure from the Ministry of Health. But the sales are now proceeding again. The writ was issued on the 24th November 1964, and the hearing of the motion was on the 26th January of this year, when the learned judge again refused any interlocutory relief. So that the two cases are very much in parallel one with the other.
At this point I should refer to section 41 of the Act of 1949, which provides: "Where a patent is in force in respect of (a) a substance capable of being used as food or medicine… M (b) a process for producing such a substance… the comptroller shall" — so it is mandatory — "on application made to him by any person interested" — and for present purposes we must assume, because the comptroller says so, that the defendants are 'persons interested" — "order the grant to the applicant of alicence on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application". Prima facie then the defendants, being "persons interested",will be entitled to a licence. But that, of course, is subject to hearing the objections of the plaintiffs (and for all I know other people) giving the Comptroller what they suggest are good reasons for thinking that It would be right to refuse the application; and this process, like so many matters connected with patents, may go on for a long time. Hence the impatience of the defendants, who decided not to wait for that interval of time, but to assume that they would get the licence in the end.
The section contains a direction to the Comptroller that he is to see to it that medicine "shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights", and subsection (3) says: "A licence granted under this section shall entitle the licensce to make, use, exercise and vend the invention". So we have the position that if you have a patent for a medicine or substance which can be used in medicine, you know that the Comp-troller can grant at any time a licence to a "person interested" to go into competition with you. Under the earlier Act, as I understand, the only licence of this sort was one to manufacture in this country, but under this Act it would not seem to be limited to that. You may get a licence although you only import in bulk and distribute in this country.
These proceedings are going forward in both cases before the Comptroller, and have reached the stage or' reply, as I understand, the time being limited to next April. It may, of course, be some time, yet before the Comptroller is in a position to hear the matter and reach any conclusion, and from him there is an appeal to the Patents Appeal Tribunal.
The learned judge, as I say, has refused an injunction in both these cases, although on the face of it in each of them these defendants are infringers of a valid patent. They are, therefore, wrongdoers, and prima facie one would think that theplaintiffs in each case were entitled to an injunction. But the grant of interlocutory relief, of course, is a discretionary matter, and there are cases in which the court may decide, notwith standing that the defendant is at fault, that the plaintiff does not need the help of an interlocutory injunction,...
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