Parke Davis & Company v Comptroller of Patents, Designs and Trade Marks and another
| Jurisdiction | England & Wales |
| Date | 1953 |
| Year | 1953 |
| Court | Queen's Bench Division |
Patent - Application for Compulsory licence - Patent relating to medicine - Application of provisions of international convention - Right to order of prohibition -
The powers of the comptroller to grant a compulsory licence for a patent in respect of food and medicine under section 41 (1) of the Patents Act, 1949, are not fettered by article 5A (4) of the International Convention for the Protection of Industrial Property which provides that a compulsory licence cannot be granted within three years of the date of issue of the patent, because article 5A relates to the prevention of abuses resulting from the exercise of exclusive rights conferred by patents, while section 41 is not concerned with such abuses, and a licence under it can be granted irrespective of the exercise or non-exercise of the patent. Accordingly, the grant of a compulsory licence under section 41 (1) within the three-year period is not inconsistent with the treaty obligations.
Had the court been of the opinion that article 5A (4) applied to an application under section 41 (1), the comptroller would have had no jurisdiction to entertain such application within the three-year period, and the fact that under the Act of 1949 there was a right of appeal from the comptroller to the Appeal Tribunal would not have been an obstacle to the granting of an order of prohibition, the two remedies being co-existent.
MOTION for an order of prohibition.
Parke, Davis & Co., a company incorporated in the United states of America, had discovered a non-toxic antibiotic which they named chloramphenicol and to which they applied the brand name of Chloromycetin. They had filed patent specifications disclosing their methods of synthesis in respect of which patents had been granted in the United states and in England pursuant to the International Convention for the Protection of Industrial Property.F1 British Drug Houses Ld. made an application under section 41 (1) of the Patents Act, 1949,F2 to the comptroller for the grant of a compulsory licence in respect of three patents based on convention applications, Nos. 652,273, 652,280 and 660,381, which were issued respectively on August 1, 1951, February 20, 1952, and May 20, 1952, relating to the synthesis of chloramphenicol. The comptroller, having followed the procedure set out in section 43 (2),F3 was apparently satisfied that a prima facie case for the granting of a compulsory licence had been made out, and that he had jurisdiction to make the order sought.
Parke, Davis & Co. applied for an order of prohibition directed to the comptroller requiring him to refrain from considering the application, on the ground that his powers under section 41 (1)F2 were fettered by the provisions of section 45 (3),F4 which applied the provisions of article 5AF5 of the International Convention to section 41,F2 and, accordingly, that the comptroller had no jurisdiction to entertain the application within three years from the date of issue of the patents.
It was not contested that the three applications to the comptroller related to the field of medicine bringing them within the orbit of section 41; it was also common ground that three years had not elapsed since the grant of the earliest of the patents.
D. N. Pritt Q.C., K. E. Shelley Q.C. and G. T. Aldous for Parke, Davis & Co.
Sir Lionel Heald Q.C., A.-G., and P. J. Stuart Bevan for the comptroller.
Sir Hartley Shawcross Q.C. and J. P. Graham for British Drug Houses Ld.
The following cases were cited in argument: Ex parte SimonF6; In re Van Gelder's PatentF7; Reg. v. Comptroller-General of Patents, ex parte TomlinsonF8; In re Wingate's PatentF9; Rex v. Comptroller-General of Patents, ex parte MuntzF10; Rex v. North, ex parte OakeyF11; Barker v. PalmerF12; In re BowenF13; Mayor of Portsmouth v. SmithF14; Secretary of State for India in Council v. Bank of India Ld.F15
March 20. LLOYD-JACOB J., reading the first judgment, referred to the facts, and continued: Section 45 (3) of the Patents Act, 1949, contains a specific limitation on the jurisdiction of the Comptroller-General. [His Lordship read the subsection and continued:] Sections 37 to 42 therein referred to are those under which the comptroller, whether the patentee approves or not, is empowered to authorize other parties to exercise the patent monopoly under what are termed compulsory licences. With the exception of section 41, such authorization is expressed in...
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