Pfizer Ltd v Medimpex Jamaica Ltd and another
| Jurisdiction | UK Non-devolved |
| Judge | Sir David Kitchin |
| Judgment Date | 02 July 2014 |
| Neutral Citation | [2014] UKPC 20 |
| Date | 02 July 2014 |
| Docket Number | Appeal No 0033 of 2013 |
| Court | Privy Council |
[2014] UKPC 20
Privy Council
From the Court of Appeal of Jamaica
Lord Neuberger
Lord Sumption
Lord Hughes
Lord Hodge
Sir David Kitchin
Appeal No 0033 of 2013
Appellant
Denise E Kitson QC Suzanne Risden-Foster
(Instructed by Blake Lapthorn)
Respondents
James Guthrie QC Dr Lloyd Barnett Vincent Chen Ian Robins
(Instructed by MA Law (Solicitors) LLP)
Heard on 1 May 2014
In 1992 Maurice Robinson, an attorney admitted in Jamaica and whose principal area of practice was intellectual property, applied to the Governor-General by petition for the grant of a patent in respect of an invention not previously known in the island, namely the besylate salt of amlodipine, a pharmaceutical which has been used to great effect in many countries for the treatment of high blood pressure. Mr Robinson explained in a declaration accompanying his petition that the invention had been communicated to him by the appellant ("Pfizer"), a company which was at that time based in Sandwich in Kent. Some 10 years later, on 22 January 2002, Jamaican patent No 3247 ("the Patent") was granted to Mr Robinson, and very shortly afterwards he assigned it to Pfizer for the nominal sum of $2.
Amlodipine besylate had in fact been discovered by scientists at Pfizer as early as 1986 and in the years that followed Pfizer sought and obtained protection for it in a number of different countries. Of particular relevance to the present proceedings is an application which Pfizer filed in Egypt in March 1987. In due course Egyptian patent No 18266 was granted upon this application. The normal term of a patent in Egypt was, at that time, 10 years and so patent No 18266 expired in March 1997, that is to say before the grant of the Patent.
For very many years Pfizer has made and sold medicinal products embodying the invention under the name Norvasc. Its sales have been very substantial. Indeed in 2001 its revenues from sales in Jamaica alone amounted to about US $1.2 million. No doubt recognising the demand for such products, in or about 2001 the respondents began to import into Jamaica and sell and distribute their own generic versions of them. These products were sold by the first and second respondents under the name Normodipine, and by the third respondent under the name Las Amlodipine. The activities of the respondents had a significant effect upon Pfizer's sales and accordingly, in June 2002, it began these proceedings against them alleging infringement of the Patent. The second respondent ceased all dealings in Normodipine at some time before 18 June 2004 and has taken no part in the proceedings since then. References to the respondents hereafter should therefore be taken as references to the first and third respondents alone.
These proceedings have always had at their heart two issues. The first turns on the proper interpretation of section 3 of the Patent Act 1857 ("the Act") and concerns the status of Mr Robinson in applying for and securing the grant of the Patent. Pfizer contends that he did so in his capacity as true and first inventor of amlodipine besylate in Jamaica. The respondents accept that he was the true and first inventor of this salt but maintain that he nevertheless made the application as attorney for Pfizer and that he was only ever the inventor in a representative capacity contemplated by the Act.
The second issue is whether, on the proper interpretation of section 29 of the Act, the expiration of a patent for the same invention in another country prior to 22 January 2002 renders the Patent invalid. Pfizer accepts that section 29 has this effect if, but only if, Mr Robinson applied for the Patent as its attorney within the meaning of section 3. However, it maintains that Mr Robinson was acting on his own account. The respondents argue that, on the proper interpretation of section 29 and by analogy with section 25 of the United Kingdom Patent Law Amendment Act 1852 ("the 1852 Act"), section 29 renders the Patent invalid whoever applied for it and irrespective of the capacity in which that person was acting. Alternatively, they contend that section 29 renders the patent invalid because Mr Robinson was acting as Pfizer's attorney within the meaning of section 3.
At trial, Jones J held that Mr Robinson was the true and first inventor of amlodipine besylate in Jamaica but he did not consider the capacity in which he had acted. He nevertheless found the Patent invalid because he accepted the respondents' submissions on the second issue. The Court of Appeal (Panton P, Harrison and Dukharan JJA) affirmed the decision of Jones J on the second issue but held he had fallen into error in failing to determine whether Mr Robinson had applied for the Patent as attorney for Pfizer. They held that Mr Robinson had indeed acted in that capacity and so the Patent was invalid for this reason too.
It will be appreciated that the first and second issues are closely related. Indeed the status of Mr Robinson in applying for the Patent is only important if the courts below fell into error in deciding the second issue, that is to say the proper interpretation of section 29 of the Act. The Board therefore considers it appropriate to address the second issue first. But before doing so, it is necessary to explain the legal framework and some common ground.
Section 3 of the Act reads:
"3. Whenever any person whosoever shall, by himself, or if he be an absentee, by his attorney, apply to the Governor-General, by way of petition, alleging that he hath invented or discovered some new and useful art, machine, manufacture, or composition of matter, not heretofore known or used within this Island, or some improvement in any such invention or discovery, and praying to obtain an exclusive property in such new invention and discovery or improvement, and that Letters Patent be granted for the same, it shall be lawful for the Governor-General, in the name of and on behalf of Her Majesty, to direct Letters Patent, under the Broad Seal of this Island, to be issued; which Letters Patent shall recite the allegations and suggestions of the said petition so to be preferred as aforesaid, and shall therein give a short description of the said invention or discovery or improvement; and thereupon shall grant to such person so applying for the same, his executors, and administrators, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, and using, and vending to others to be used, the said new invention or discovery or improvement; and such Letters Patent shall be signed by the Governor-General, and shall be good and available to the grantee therein named by force of this Act:
Provided, that it shall be lawful for the Governor-General, if he should deem it expedient, to insert in any such Letters Patent, a provision extending the operation thereof for a further term of seven years."
The Act therefore confers upon the Governor-General a power to issue a patent to particular persons. In broad terms, the Governor-General may direct that a patent be issued to any person who alleges that he has invented or discovered a new and useful invention, discovery or improvement not hitherto known or used in Jamaica, and who applies for the patent by himself or, if he is an absentee, by his attorney.
It can be seen from this provision that the Act is concerned with local novelty and it is therefore permissible to secure a patent in Jamaica for inventions previously made available to the public in another country. That this is the scheme of the Act is also apparent from sections 25, 29 and 31. This may seem somewhat surprising to those familiar only with the provisions of the European Patent Convention. However, invention by importation was a feature of United Kingdom law until the Patents Act 1977 came into force in June 1978. The principle was explained in the early 17 th century in the case of The Clothworkers of Ipswich (1614) 78 ER 147 in these terms:
"But if a man hath brought in a new invention and a new trade within the kingdom, in peril of his life, and consumption of his estate or stock, & c. or if a man hath made a new discovery of any thing, in such cases the King of his grace and favour, in recompense of his costs and travail, may grant by charter unto him, that he only shall use such a trade or trafique for a certain time, because at first the people of the kingdom are ignorant, and have not the knowledge or skill to use it. But when that patent is expired the King cannot make a new grant thereof …"
The rationale for such a system is that it encourages the setting up within a country of industries already in existence abroad, as emerges from the short report of Edgeberry v Stephens (1691) 1 WPC 35, 2 Salk 447:
"A grant of a monopoly may be to the first inventor by the 21 Jac.1; and, if the invention be new in England, a patent may be granted, though the thing was practised beyond sea before; for the statute speaks of new manufactures within this realm; so that if they be new here, it is within the statute; for the Act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study, it is the same thing."
It seems reasonable to suppose that this was the intention of the Jamaican legislature in enacting section 3 of the Act.
The Act also recognises that the applicant may not be resident in Jamaica. If that is the case, the applicant must nevertheless provide a postal address within the island, as section 4 makes clear:
"4. Every applicant shall in his application give a postal address within the Island, to which any notice or communication may be addressed, and any notice or communication duly sent by post...
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