Re Asahi Kasei Kogyo Kabushiki Kaisha (Appellants)

JurisdictionEngland & Wales
CourtHouse of Lords
JudgeLord Keith of Kinkel,Lord Brandon of Oakbrook,Lord Ackner,Lord Oliver of Aylmerton,Lord Jauncey of Tullichettle
Judgment Date09 May 1991
Judgment citation (vLex)[1991] UKHL J0509-1
Date09 May 1991

[1991] UKHL J0509-1

House of Lords

Lord Keith of Kinkel

Lord Brandon of Oakbrook

Lord Ackner

Lord Oliver of Aylmerton

Lord Jauncey of Tullichettle

In re Asahi Kasei Kogyo Kabushiki Kaisha
(Appellants)
Lord Keith of Kinkel

My Lords,

1

I have had the opportunity of considering in draft the speeches to be delivered by my noble and learned friends Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle. I agree with them and for the reasons they give would allow this appeal.

Lord Brandon of Oakbrook

My Lords,

2

I have had the advantage of reading in draft the speeches prepared by my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle. I agree with both speeches and for the reasons given in them I would allow the appeal.

Lord Ackner

My Lords,

3

I have had the advantage of reading in draft the speeches prepared by my noble and learned friends, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle. I agree with both speeches and for the reasons given in them I, too, would allow the appeal.

Lord Oliver of Aylmerton

My Lords,

4

This appeal raises an important and difficult point of construction of the provisions relating to novelty and priority contained in sections 2 and 5 of the Patents Act 1977 ("the Act"). In the final analysis the problem which the House has been called upon to solve resolves itself into the short question of the correct construction of a single subsection of the Act, but it has been necessary to consider not only a number of other statutory provisions (including some provisions of the Patents Act 1949) but also portions of the Paris Convention for the Protection of Industrial Property of 1883, the Strasbourg Convention of 1963 and the European Patents Convention ("the Convention"). I would be ungrateful if I did not acknowledge at the outset the assistance which I have received in the course of a guided tour of (to me) hitherto unfamiliar territory not only from the submissions of counsel but from the very carefully prepared printed cases lodged by the parties.

5

The underlying purpose of the patent system is the encouragement of improvements and innovation. In return for making known his improvement to the public the inventor receives the benefit of a period of monopoly during which he becomes entitled to prevent others from performing his invention except by his licence. The necessarily technical process of applying for a patent, which involves the formulation of precisely expressed claims defining the extent of the monopoly applied for, and the equally technical process of investigating the claims made inevitably involve a considerable lapse of time between the date when the inventor first makes his application and the date when his invention is exposed to the public and his patent is granted. Equally inevitably, because two or more persons are likely to evolve and develop similar concepts, competing applications for patents for the same invention will be made, sometimes within a short space of time and possibly in different parts of the world, so that provision has to be made for regulating priorities between copending applications both domestically and in different countries. This has for many years been dealt with by international convention which is reflected in domestic legislation, priority being regulated on a "first to file" basis, so that that application which is the first in time to be filed for processing by the appropriate scrutinising authority is accorded precedence even though it may not, at that stage, have complied with all the formalities required by law for a completed application.

6

Although the instant appeal turns ultimately upon the correct construction of section 2(3) of the Act, which is concerned not directly with priority but with delimiting what is to be considered the existing state of the art for the purpose of determining whether an invention possesses the necessary quality of novelty, the problem posed cannot be answered without consideration both of a number of interlocking sections of the Act and of the conventional background to the statutory provisions.

7

Inevitably it becomes necessary for an understanding of the problems which arise to set out verbatim and in context substantial portions of the relevant sections of the Act and of such articles of the conventions as are material to the appeal and it may be convenient to do this before rehearsing the factual background and the history of the litigation in the courts below and evaluating their impact upon the application in suit.

8

To begin with, regard has to be paid to the fact that one of the primary purposes of the Act was to give effect to the United Kingdom's obligations under a number of international conventions and in particular the Convention. Sections 2 and 5 of the Act, with which this appeal is particularly concerned, refer to "an application for a patent," a patent being defined as a patent under the Act. Section 130 of the Act, however, contains a number of definitions which extend the expression to include an application for a patent under the Convention in the European Patent Office, so that a patent granted in that office and designating the United Kingdom has the same effect as a patent granted under the Act. This is a feature of the legislation which not only has an important bearing on the construction of the statute but underlines the importance of a common jurisprudence in relation to domestic and Convention patent applications. At the outset, however, there should be noted the express provisions of section 130(7) of the Act which, so far as relevant, is in these terms:

"Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention … it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 88(6) and (7), 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention … have in the territories to which those conventions apply."

9

Turning to the substantive provisions of the Act, section 1 lays down the essential qualities required for patentability, the first of which is that "the invention is new." The extent of an "invention" is defined in section 125(1) in the following terms:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

10

The expression "a claim of the specification of the application" is explained by reference to section 14 which lays down the formal requirement for making an application for a patent. Subsection (1) requires the application to be in a form prescribed by rules and

Lord Oliver of Aylmerton

My Lords,

11

This appeal raises an important and difficult point of construction of the provisions relating to novelty and priority contained in sections 2 and 5 of the Patents Act 1977 ("the Act"). In the final analysis the problem which the House has been called upon to solve resolves itself into the short question of the correct construction of a single subsection of the Act, but it has been necessary to consider not only a number of other statutory provisions (including some provisions of the Patents Act 1949) but also portions of the Paris Convention for the Protection of Industrial Property of 1883, the Strasbourg Convention of 1963 and the European Patents Convention ("the Convention"). I would be ungrateful if I did not acknowledge at the outset the assistance which I have received in the course of a guided tour of (to me) hitherto unfamiliar territory not only from the submissions of counsel but from the very carefully prepared printed cases lodged by the parties.

12

The underlying purpose of the patent system is the encouragement of improvements and innovation. In return for making known his improvement to the public the inventor receives the benefit of a period of monopoly during which he becomes entitled to prevent others from performing his invention except by his licence. The necessarily technical process of applying for a patent, which involves the formulation of precisely expressed claims defining the extent of the monopoly applied for, and the equally technical process of investigating the claims made inevitably involve a considerable lapse of time between the date when the inventor first makes his application and the date when his invention is exposed to the public and his patent is granted. Equally inevitably, because two or more persons are likely to evolve and develop similar concepts, competing applications for patents for the same invention will be made, sometimes within a short space of time and possibly in different parts of the world, so that provision has to be made for regulating priorities between copending applications both domestically and in different countries. This has for many years been dealt with by international convention which is reflected in domestic legislation, priority being regulated on a "first to file" basis, so that that application which is the first in time to be filed for processing by the appropriate scrutinising authority is accorded precedence even though it may not, at that stage,...

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