May And Baker Ltd & Ors v. Boots Pure Drug Company Ltd

LORDS DECISIONS

LORDS DECISIONS >>

LORDS

LORDS OF APPEAL

LORD SIMONDS

LORD NORMAND

LORD MORTON OF HENRYTON

LORD MACDERMOTT

LORD REID

LORDS

LORDS OF APPEAL FOR JUDGMENT

LORD SIMONDS

LORDS,

JUSTICE JENKINS, RAISES A QUESTION OF SOME DIFFICULTY.

JUSTICE JENKINS DEALT WITH TWO MATTERS, (DA PETITION BY THE PRESENT RESPONDENTS, BOOTS PURE CRUG COMPANY LTD., FOR THE REVOCATION OF CERTAIN LETTERS PATENT NO. 533,495 WHICH HAD BEEN GRANTED TO THE APPELLANTS JOINTLY AND (2) A MOTION BY THE APPELLANTS THAT THEY MIGHT BE AT LIBERTY TO AMEND THE SPECIFICATION OF THOSE LETTERS PATENT IN THE MANNER WHICH I SHALL LATER DESCRIBE. THE LEARNED JUDGE REVOKED THE LETTERS PATENT AND REFUSED LEAVE TO AMEND. BEFORE THE COURT OF APPEAL THE ONLY MATTER IN ISSUE WAS WHETHER THE LEARNED JUDGE HAD RIGHTLY REFUSED LEAVE TO AMEND, THE APPELLANTS HAVING CONCEDED THAT, IF THAT LEAVE WAS NOT GIVEN, THEY COULD NOT RESIST REVOCATION. THE COURT OF APPEAL (LORD GREENE, M.R., AND SOMERVELL AND EVERSHED, L.J.J.) WERE UNANIMOUS IN HOLDING THAT THE LEARNED JUDGE HAD RIGHTLY REFUSED LEAVE TO AMEND. IT IS THAT MATTER ALONE WHICH IS NOW FOR YOUR LORDSHIPS' CONSIDERATION.

LORDSHIPS WITH AN EXPOSITION OF THE CHEMISTRY INVOLVED IN THE CASE. THE HOUSE HAS THE ADVANTAGE OF AN EXPLANATORY STATEMENT OF REMARKABLE LUCIDITY BY THE LEARNED JUDGE UPON WHICH I CANNOT HOPE TO IMPROVE, AND I WILL ASSUME THAT IT IS READ INTO THIS OPINION FOR THE PURPOSE OF UNDERSTANDING ANY TECHNICAL TERMS THAT I MAY USE.

LORDS, I FIND IT HARD TO THINK OF MORE SUITABLE WORDS WITH WHICH TO PREFACE A STATEMENT OF THE NATURE OF THE INVENTION CLAIMED BY THE SPECIFICATION, AND, AS THAT IS THE VERY MATTER IN DEBATE, LET ME SET OUT WHAT THE INVENTOR SAYS IS HIS INVENTION. THERE IS NO AMBIGUITY ABOUT IT:

LORDS, I HAVE SET OUT THUS IN DETAIL THE UNAMENDED SPECIFICATION, BECAUSE IT IS ONLY BY THE CONSIDERATION OF IT AS A WHOLE THAT ONE CAN ARRIVE AT A JUST CONCLUSION OF THE QUESTION WHAT WAS THE INVENTION CLAIMED. HAVING DONE SO I CAN GIVE NO OTHER MEANING TO THE DOCUMENT THAN TO SAY THAT THE INVENTOR CLAIMS THAT THE WHOLE RANGE OF BENZENE SULPHONAMIDO DERIVATIVES WHICH FALL WITHIN THE CONSISTORY CLAUSE IS HIS INVENTION, NOT INDEED IN THE SENSE THAT HE DISCOVERED THAT THEY COULD BE MADE OR HOW TO MAKE THEM, BUT IN THE SENSE THAT HE DISCOVERED THAT, ONE AND ALL, THEY HAD THERAPEUTIC VALUE. THE TITLE, THE CONSISTORY CLAUSE, THE CLAIMS THEMSELVES, ADMIT OF NO OTHER MEANING. IT WAS URGED UPON THE HOUSE THAT THAT IS NOT THE WAY A CHEMIST WORKS, AND THAT ACCORDINGLY THE DOCUMENT IS TO BE READ AS A STATEMENT BY THE INVENTOR THAT HE HAD BY EXPERIMENT FOUND THAT TWO COMPOUNDS FALLING WITHIN A SCIENTIFICALLY ASCERTAINABLE GROUP HAD THERAPEUTIC VALUE AND DRAWN THE INFERENCE THAT ALL COMPOUNDS FALLING WITHIN THAT GROUP HAD SIMILAR VALUE. I AM NOT CONCERNED WITH THE PROCESS OF REASONING WHICH LED TO THE CLAIM. IF IT IS CORRECTLY STATED, IT IS NOT, AS AN EXAMPLE OF THE INDUCTIVE METHOD, TO BE COMMENDED. WHAT I AM CONCERNED WITH IS WHAT THE INVENTOR HAS CLAIMED, AND, LET HIS METHOD OF REASONING BE QUALIFIED BY WHATEVER EPITHET YOU LIKE, HE HAS, AS I SHOULD HAVE THOUGHT BEYOND ALL CONTROVERSY, CLAIMED AS HIS INVENTION THE PROCESS OF MANUFACTURE OF A VAST RANGE OF CHEMICAL COMPOUNDS AND THE CHEMICAL SUBSTANCES RESULTING FROM THAT PROCESS. IT DOES NOT, AS IT APPEARS TO ME, IN ANY WAY ALTER THE NATURE OF THAT INVENTION THAT HE HAS ILLUSTRATED IT BY TWO EXAMPLES OF SPECIFIC COMPOUNDS WHICH FALL WITHIN THE GENERAL DESCRIPTION. IF HE HAD NOT DONE SO, THAT WOULD BY ITSELF HAVE BEEN GOOD GROUND FOR REVOKING THE PATENT UNDER SEC. 25 (2) (H) AND (J) OF THE ACT. I HAVE EMPHASISED WHAT IN MY VIEW IS THE INVENTION CLAIMED. BEFORE I TURN TO THE PROPOSED AMENDMENT, I WILL ONLY ADD THAT THERE IS NOT ONE HINT IN THE DOCUMENT THAT THE EXEMPLARY DRUGS, SULPHATHIAZOLE AND SULPHAMETHYLTHIAZOLE, WERE ESSENTIALLY DISTINGUISHABLE FROM ANY OTHER MEMBERS OF THE VAST GROUP WITHIN WHICH THEY FALL, OR THAT THEY HAD SOME PECULIAR CHARACTERISTIC WHICH GAVE THEM THERAPEUTIC VALUE. NO ONE, I SUGGEST, COULD FAIRLY READ THE DOCUMENT WITHOUT CONCLUDING THAT THEIR THERAPEUTIC VALUE WAS DERIVED FROM A GENERIC QUALITY: THEY ILLUSTRATED THE INVENTION JUST BECAUSE THEY HAD THAT QUALITY. IF THERE WAS ANY LINGERING DOUBT UPON THIS POINT, IT MUST, I THINK, BE DISSOLVED BY THE FACT THAT NO SEPARATE CLAIM IS MADE FOR THE MANUFACTURE OF THESE TWO SPECIFIC DRUGS OR FOR THE DRUGS THEMSELVES OR EITHER OF THEM.

LORDSHIPS, THAT GENERALLY THE PURPOSE OF AN AMENDMENT IS TO VALIDATE A PATENT WHOSE VALIDITY IS OTHERWISE OPEN TO ATTACK AND THAT THAT PURPOSE IS RECOGNISED BY THE ACT. IT IS HOWEVER RECOGNISED WITH A PROVISO.

LORD JUSTICE AND TO REMEMBER THAT THE AREA OF INVENTION, ASSUMING IT TO COINCIDE WITH THE MONOPOLY CLAIMED, BECOMES A "PROHIBITED AREA WHICH, THOUGH IN THE CASE OF A MEDICINAL DRUG IT IS NOT ABSOLUTELY BARRED TO COMPETITORS, AT LEAST OFFERS THEM LITTLE ENCOURAGEMENT. LET IT BE REMEMBERED TOO THAT WITHIN THIS PROHIBITED AREA, UPON WHICH OTHERS MAY NOT FREELY ENTER, THE PATENTEE MAY BE AT EASE, CONTENT WITH THE PROGRESS HE HAS MADE AND DENYING TO OTHERS THE OPPORTUNITY OF WHICH HE DOES NOT CARE TO AVAIL HIMSELF. THIS IS THE BACKGROUND AGAINST WHICH THE TEST OF "DIFFERENCE" IS TO BE EXAMINED.

LORDS, I HESITATE TO APPEAL TO COMMON SENSE, LEST OTHERS SHOULD TAKE A DIFFERENT VIEW OF THE CASE. YET IN THE CONSENSUS OF OPINION OF ALL THE LEARNED JUDGES WHO HAVE DEALT WITH THIS MATTER I FIND JUSTIFICATION FOR THE VIEW WHICH I MOST EMPHATICALLY HOLD THAT IT IS PLAIN COMMON SENSE TO SAY THAT THE INVENTIONS ARE NOT THE SAME BUT DIFFERENT: AND I THINK THAT, IF THEY ARE DIFFERENT, THE SUBSTANTIAL DIFFERENCE COULD NOT BE DENIED.

LORDS, I AM CONSCIOUS THAT I HAVE SO FAR IGNORED A FACT WHICH LEARNED COUNSEL FOR THE APPELLANTS PUT IN THE FOREFRONT OF THEIR ARGUMENT, VIZ. THAT THE TWO SPECIFIC DRUGS ARE THEMSELVES DESCRIBED BY WAY OF ILLUSTRATION OR EXAMPLE IN THE BODY OF THE SPECIFICATION. THEIR ARGUMENT IS THUS COMPENDIOUSLY STATED IN PARAGRAPH 17 OF THEIR FORMAL CASE, "THAT TO LIMIT THE CLAIMS OF A SPECIFICATION TO THE ONLY FORM OF THE INVENTION SPECIFICALLY DESCRIBED IN THE UNAMENDED SPECIFICATION, AND THEREIN CLAIMED IN GENERAL TERMS, CANNOT BE TO CLAIM A SUBSTANTIALLY DIFFERENT INVENTION " NOT AT FIRST SIGHT APPEAR OBVIOUS WHY THIS SHOULD BE SO. FOR, IF A SPECIFIC DRUG FALLS WITHIN THE GENERAL TERMS OF THE INVENTION WHOSE NATURE IS STATED IN THE CONSISTORY CLAUSE AND IS FOR THAT REASON TO BE REGARDED AS THE SAME INVENTION, IT REMAINS THE SAME INVENTION WHETHER OR NOT IT IS SPECIFICALLY DESCRIBED BY WAY OF EXAMPLE OR ILLUSTRATION. THE SAMENESS OR DIFFERENCE OF THE TWO INVENTIONS CANNOT BE DETERMINED BY THE FACT THAT THE PATENTEE HAS ELECTED TO GIVE THE ONE AS AN EXAMPLE OF THE OTHER, THOUGH I DO NOT DOUBT THAT, IF HE DOES SO, THE PROBABILITY IS IN FAVOUR OF THEIR SAMENESS. IN THIS CASE, IF THE INVENTION OF SULPHATHIAZOLE IS NOT DIFFERENT FROM THE INVENTION OF THE VAST GROUP OF WHICH IT IS A MEMBER, IT IS NOT DIFFERENT, AND THEREFORE IT IS THE SAME, IRRESPECTIVELY OF WHETHER IT IS SPECIFICALLY DESCRIBED OR NOT. YET I DO NOT THINK THAT IT WAS SERIOUSLY CONTENDED THAT, IF IT WAS SOUGHT TO AMEND THE SPECIFICATION BY CLAIMING AS THE INVENTION NOT SULPHA THIAZOLE BUT SOME OTHER DRUG OF THERAPEUTIC VALUE FALLING, AS SULPHA THIAZOLE DOES, WITHIN THE GENERAL GROUP BUT NOT SPECIFICALLY DESCRIBED IN THE SPECIFICATION, SUCH AN AMENDMENT WOULD BE PERMISSIBLE. I WILL REVERT TO THIS LATER BUT FIRST MENTION ONE OTHER MATTER.

LORD MORTON OF HENRYTON IN THE RALEIGH CYCLE CASE 65 R.P.C. AT P. 157, WHERE HE EXPLAINS HOW A PATENTEE, FEARING THAT HIS EARLIER CLAIMS MAY BE STATED TOO WIDELY AND HIS PATENT THEREFORE BE HELD INVALID, CLAIMS PROTECTION IN HIS FINAL CLAIM FOR THE " PREFERRED " EMBODIMENT" OF HIS INVENTION WHICH HE HAS DESCRIBED IN THE SPECIFICATION.

LORDSHIPS. BUT IT APPEARS TO ME TO BEG THE QUESTION HERE TO BE DETERMINED TO SAY THAT IN EVERY CASE, IN WHICH THE PATENTEE HAS STATED THE NATURE OF HIS INVENTION IN WIDE AND GENERAL TERMS AND THEN GIVEN AN ILLUSTRATION OF IT. HE CAN SHIFT HIS GROUND AND CLAIM THAT HIS INVENTION IS NOT THE GENERAL BUT THE PARTICULAR. HE CAN DO SO IF, BUT ONLY IF, THEY ARE THE SAME INVENTIONS. THAT REMAINS THE QUESTION TO BE SOLVED, AND IT IS TO BE SOLVED BY A CONSIDERATION OF THE FACTS OF EACH CASE.

LORD HEWART, L.C.J., ""ALTHOUGH IN THE ACT OF 1907, AS INDEED, IN THE ACT OF 1883, THE WORDS 'ALLEGED INVENTION' WERE EMPLOYED, IT IS QUITE CLEAR, AS HAS BEEN DECLARED BY MORE THAN ONE LAW OFFICER, AND AS ONE WOULD EXPECT APART FROM ANY EXPRESSION OF OPINION IN ANY QUARTER, THAT THE WORD 'ALLEGED' IN THIS DEFINITION GOES ONLY TO THE EPITHET 'NEW' AND DOES NOT MAKE THAT AN INVENTION WHICH IS NOT A MANNER OF NEW MANUFACTURE BUT WHICH THE ALLEGED INVENTOR CHOOSES TO DESCRIBE AS AN INVENTION". I AGREE WITH THIS AND WOULD SAY, THEREFORE, THAT IN THE EXERCISE OF ITS JURISDICTION UNDER SEC. 22 THE COURT, COMPARING THE OLD AND THE NEW INVENTIONS CLAIMED, IS NOT DEBARRED FROM AN EXAMINATION OF THE FACTS BY THE INTRODUCTION OF THE WORD "ALLEGED".

LORDS, I DO NOT THINK THAT THE APPELLANTS GET ANY HELP FROM THIS SOMEWHAT TENTATIVE OBSERVATION. IN THE FIRST PLACE, AS I HAVE ALREADY POINTED OUT, NO CLAIM WAS MADE FOR THE TWO SPECIFIC DRUGS AND NO EXPLANATION WAS OFFERED WHY A PATENTEE, WHO WAS BY NO MEANS INOPS CONSILII, DID NOT MAKE IT. IN THE SECOND PLACE IT IS A SHEER BEGGING OF THE QUESTION TO SAY THAT IN THIS CASE " THE CLAIMS COULD ORIGINALLY HAVE BEEN SEPARATED UP WITHOUT DIFFICULTY ", IF BY THAT IS MEANT THAT THE COMPTROLLER, HAVING THE KNOWLEDGE OF THIS ART AND OF THE FACTS WHICH THIS CASE HAS DISCLOSED, OUGHT TO HAVE TREATED THE INVENTION OF A GROUP HAVING A GENERAL THERAPEUTIC VALUE AS THE SAME THING AS THE INVENTION OF A SPECIFIC DRUG HAVING A PARTICULAR THERAPEUTIC VALUE, AND OUGHT ACCORDINGLY TO HAVE GRANTED ONE PATENT TO COVER THEM BOTH. I AM CLEARLY OF OPINION THAT HE OUGHT TO HAVE DONE NO SUCH THING. I DO NOT IGNORE THAT THE COMPTROLLER, NOT KNOWING WHAT WAS NOW KNOWN, MIGHT HAVE GRANTED SUCH A PATENT, AND THAT IN THAT CASE THERE MIGHT BE THE SPECIFIC AS WELL AS THE GENERAL CLAIM, AND, FURTHER, THAT IN THAT CASE S.32A OF THE ACT MIGHT IN THE EVENT OF AN INFRINGEMENT ACTION CREATE A POSITION OF PECULIAR DIFFICULTY. BUT IT IS NOT A HYPOTHETICAL DIFFICULTY THAT HAS TO BE FACED AND I DECLINE TO TEST THE VALIDITY OF THE APPELLANTS' CASE BY CREATING IT.

LORDS IN THIS HOUSE IN RALSTON V. SMITH 11 H.L.C. 223 AND SEED V. HIGGINS 8 H.L.C. 550. IN THE FORMER CASE LORD WESTBURY L.C. STATED THAT THE OBJECT OF THE ACT AUTHORISING DISCLAIMERS (5 AND 6 WILL. IV C. 83) WAS THAT "WHEN YOU HAVE IN YOUR SPECIFICATION A SUFFICIENT AND GOOD DESCRIPTION OF A USEFUL INVENTION, BUT THAT DESCRIPTION IS IMPERILLED OR HAZARDED BY SOMETHING BEING ANNEXED TO IT WHICH IS CAPABLE OF BEING SEVERED LEAVING THE ORIGINAL DESCRIPTION, IN ITS INTEGRITY, GOOD AND SUFFICIENT, WITHOUT THE NECESSITY OF ADDITION, THEN YOU MIGHT BY THE OPERATION OF A DISCLAIMER LOP OFF THE VICIOUS MATTER, AND LEAVE THE ORIGINAL INVENTION AS DESCRIBED IN THE SPECIFICATION UNTAINTED AND UNINJURED BY THAT VICIOUS EXCESS". I SHOULD NOT IN THE LEAST DISSENT FROM THIS STATEMENT AS APPLYING ALSO TO S.22 OF THE ACT. BUT THE OPERATION WHICH LORD WESTBURY HAD IN MIND IS REMOTE INDEED FROM THE WHOLESALE ABANDONMENT OF THE INVENTION ORIGINALLY CLAIMED WHICH THE AMENDMENT HERE PROPOSED WOULD EFFECT. EQUALLY, WHERE LORD CRANWORTH, REFERRING TO THE DISTINCTION BETWEEN RALSTON V. SMITH AND SEED V. HIGGINS* AFFIRMS THAT "YOU MIGHT DISCLAIM SOMETHING WHICH LEAVES UNTOUCHED A DESCRIPTION WHICH IS ITSELF PERFECT", I WOULD NOT IMPUTE TO HIM THE THOUGHT THAT THE RESULT OF THIS AMENDMENT WOULD BE TO LEAVE UNTOUCHED A PERFECT DESCRIPTION OF THE INVENTION AS ORIGINALLY CLAIMED.

LORD NORMAND

LORDS,

LORD JUSTICE EVERSHED'S STATEMENT: "THE PHRASE 'SUBSTANTIALLY DIFFERENT' IS COMMON ENOUGH IN THE ENGLISH LANGUAGE. THERE IS NOTHING IN SEC. 22 TO GIVE IT A SPECIAL MEANING. IT REQUIRES NO MINUTE ANALYSIS, NO ELABORATION BY WAY OF METAPHOR FOR ITS EXPLANATION." I MAY ADD THAT FOR THE PURPOSES OF THE COMPARISON WHICH THE COURT MUST MAKE UNDER THE PROVISO IT IS IRRELEVANT TO ENQUIRE WHETHER THE AMENDMENT WILL OR WILL NOT HAVE THE EFFECT OF MAKING AN INVALID PATENT VALID. THAT IS NO DOUBT THE PURPOSE OF AN AMENDMENT, BUT WHETHER THE AMENDMENT WAS NECESSARY AND WHETHER IT HAS SUCCEEDED ARE MATTERS INDIFFERENT TO THIS QUESTION OF COMPETENCY. THE TERMS OF THE COMPARISON, IT MUST ALWAYS BE REMEMBERED, ARE THE ALLEGED INVENTIONS.

LORD MORTON OF HENRYTON

LORDS,

LORDSHIPS' HOUSE.

LORD GREENE, M.R., IN THE PRESENT CASE:

LORDS, I CANNOT UNDERSTAND WHY THE PATENTEES DID NOT ADD A SIXTH CLAIM FOR THE TWO DRUGS ALREADY SPECIFICALLY DESCRIBED, SULPHATHIAZOLE AND SULPHAMETHYLTHIAZOLE "WHENEVER PREPARED AND PRODUCED BY THE MANUFACTURE PARTICULARLY DESCRIBED AND ASCERTAINED HEREIN OR BY ANY PROCESS WHICH IS AN OBVIOUS CHEMICAL EQUIVALENT THEREOF". I SHALL RETURN TO THIS SUBJECT LATER, MERELY OBSERVING AT THE MOMENT THAT NO SUCH CLAIM APPEARS IN THE UNAMENDED SPECIFICATION, AND IT MUST BE CONSTRUED AS IT STANDS. I THINK MR. DREWE WAS RIGHT IN SAYING THAT THE ALLEGED INVENTION CLAIMED THEREBY IS AN INVENTION OF IMPROVED THERAPEUTICS CONSISTING IN THE MANUFACTURE OF ANY PARA-AMINO-BENZENE-SULPHONAMIDO-THIAZOLE DERIVATIVE AND. IN PARTICULAR.AS THE BEST METHOD OF PERFORMANCE OF THAT INVENTION, THE TWO DRUGS SPECIFICALLY MENTIONED. AS TO THE SCOPE OF THE CLAIMS, I ACCEPT ENTIRELY THE VIEW EXPRESSED BY JENKINS, J., AS FOLLOWS: -

LORDSHIPS HAVE TO DETERMINE WHETHER THE LATTER OF THE TWO INVENTIONS WHICH I HAVE JUST DESCRIBED IS OR IS NOT "SUBSTANTIALLY DIFFERENT" FROM THE FORMER. CERTAINLY IT IS SUBSTANTIALLY SMALLER, AND THE PROTECTION CLAIMED IS STRICTLY LIMITED. THE REASON FOR THE DISCLAIMER IS NOT IN DOUBT.

LORDS, THE FACT THAT THE INVENTION CLAIMED BY THE AMENDED SPECIFICATION IS SUBSTANTIALLY SMALLER THAN THAT CLAIMED BY THE UNAMENDED SPECIFICATION ADMITTEDLY DOES NOT OF ITSELF RENDER THE TWO INVENTIONS "SUBSTANTIALLY " DIFFERENT", WITHIN THE MEANING OF SECTION 22 (SEE MY OBSERVATION (A) ON THAT SECTION). IS THERE ANY OTHER GROUND UPON WHICH THE TWO INVENTIONS CAN BE HELD TO BE SUBSTANTIALLY DIFFERENT? IN MY VIEW THERE IS NO SUCH GROUND. THE AMENDMENT SOUGHT IN THE PRESENT CASE IS TO MY MIND JUST THE TYPE OF AMENDMENT BY WAY OF DISCLAIMER WHICH IS CONTEMPLATED AND PERMITTED BY SECTION 22. THE INVENTORS FOUND THAT THE SCOPE OF THEIR INVENTION WAS NOT SO WIDE AS THEY HAD SUPPOSED. THEY DESCRIBED THE MANUFACTURE OF A WIDE CLASS OF NEW SUBSTANCES, AND ASSERTED THAT EVERY MEMBER THEREOF WAS THERAPEUTICALLY VALUABLE; THEY CLAIMED PROTECTION FOR THE WHOLE OF THAT CLASS AND SET OUT. AS THE PREFERRED EMBODIMENT OF THEIR INVENTION, TWO SUBSTANCES WHICH UNDOUBTEDLY HAD THE THERAPEUTICAL VALUE ORIGINALLY CLAIMED FOR THE WHOLE CLASS. FINDING THAT THEY COULD NOT PROPERLY MAINTAIN THEIR WIDER CLAIM, BECAUSE THEY COULD NOT SHOW THAT EVERY MEMBER OF THE WIDE CLASS WAS THERAPEUTICALLY VALUABLE, THEY DESIRED TO DISCLAIM EVERYTHING EXCEPT THE TWO SPECIFIC SUBSTANCES, WHICH UNDOUBTEDLY WERE THERAPEUTICALLY VALUABLE. IT SEEMS TO ME THAT IN SO DOING THE APPELLANTS ARE NOT CLAIMING A DIFFERENT INVENTION, BUT ARE CLAIMING SOMETHING WHICH IS A PART OF THE WIDE INVENTION ORIGINALLY CLAIMED. NOT ONLY IS IT A PART OF THAT WIDE INVENTION, TWO SUBSTANCES OUT OF MILLIONS, BUT IT IS, AS MR. DREWE PUTS IT, THE PITH AND CENTRE OF THAT WIDE INVENTION, THAT WHICH WAS SPECIFICALLY PUT FORWARD IN THE ORIGINAL SPECIFICATION AS THE PREFERRED EMBODIMENT OF THE INVENTION.

LORDS, THIS SUGGESTION SURELY OVERLOOKS THE POINT THAT IN SECTION 22 THE WORD "INVENTION" INCLUDES AN ALLEGED INVENTION. FOR THE PURPOSE OF ASCERTAINING WHETHER THE INVENTIONS CLAIMED IN THE AMENDED AND UNAMENDED SPECIFICATIONS RESPECTIVELY ARE DIFFERENT, IT IS NECESSARY TO CONSIDER THE ALLEGED INVENTION CLAIMED IN THE LATTER DOCUMENT, ON THE FOOTING THAT THE STATEMENTS IN THAT DOCUMENT ARE TRUE. IF THE DOCUMENTS ARE LOOKED AT IN THIS LIGHT, IT BECOMES APPARENT, TO MY MIND, THAT THE TWO SUBSTANCES ARE TWO EXAMPLES OF A LARGE CLASS OF THERAPEUTICALLY VALUABLE SUBSTANCES, AND THAT THE APPELLANTS ARE MERELY DISCLAIMING ALL OTHER MEMBERS OF THE CLASS AND COMING DOWN UPON THESE TWO SUBSTANCES.

LORDSHIPS WELL KNOW, TO INSERT SUCH A SERIES OF CLAIMS. THE FIRST CLAIM IS USUALLY A CLAIM FOR THE ALLEGED INVENTION IN ITS WIDEST FORM AND EACH SUCCEEDING CLAIM IS USUALLY SOMEWHAT NARROWER THAN ITS IMMEDIATE PREDECESSOR. THE FILIAL CLAIM IS USUALLY A CLAIM FOR THE PREFERRED EMBODIMENT OF THE INVENTION, AND THE REPORTED CASES CONTAIN MANY EXAMPLES OF SPECIFICATIONS SO DRAFTED. IF THE ORIGINAL SPECIFICATION IN THE PRESENT CASE HAD CONTAINED A SIXTH CLAIM IN THE FORM ALREADY DESCRIBED, I DO NOT THINK THAT THE COMPTROLLER WOULD EVER HAVE THOUGHT THAT CLAIM 1 AND CLAIM 6 CLAIMED TWO DIFFERENT INVENTIONS. I THINK HE WOULD HAVE CONCLUDED, AND RIGHTLY CONCLUDED, THAT A CLAIM FOR AN INVENTION OF WIDE SCOPE, FOLLOWED BY A CLAIM FOR THE PREFERRED EMBODIMENT OF THAT INVENTION, CANNOT OFFEND AGAINST THE PROVISION THAT " EVERY PATENT SHALL BE GRANTED FOR ONE INVENTION ONLY "

LORDSHIPS' HOUSE IN SEED V. HIGGINS. 8 H.L.C. 550. AND RALSTON V. SMITH. 11 H.L.C. 223. AS THESE TWO CASES NOT ONLY ASSIST IN THE CONSIDERATION OF MY QUESTION (C) BUT ALSO, IN MY VIEW, LEND STRONG SUPPORT GENERALLY TO THE CONTENTIONS OF THE APPELLANTS, I MUST REFER TO THEM AT SOME LENGTH. IN SEED'S CASE THE APPELLANT HAD BEEN GRANTED A PATENT ON THE 14TH JULY, 1846, FOR THE INVENTION OF CERTAIN IMPROVEMENTS IN MACHINERY FOR ROVING COTTON. AT THAT TIME THE INSERTION OF CLAIMS IN A SPECIFICATION WAS NOT OBLIGATORY, AND THE SAME OBSERVATION APPLIES TO RALSTON S CASE. SEED'S SPECIFICATION CONTAINED THE FOLLOWING PASSAGE :-

LORDSHIPS' HOUSE REJECTED THIS PLEA AND HELD THAT THE DISCLAIMER WAS GOOD. LORD CRANWORTH OBSERVED AT PAGE 563,

LORD CRANWORTH REFERS TO "THE PARTICULAR CLAIM" THE PATENTEE HAD ORIGINALLY MADE ONLY THE GENERAL CLAIM, AND BY HIS DISCLAIMER HE SOUGHT PROTECTION ONLY FOR THE "PARTICULAR MODE OF APPLICATION" WHICH HE HAD DESCRIBED, BUT HAD NOT CLAIMED IN TERMS, IN THE ORIGINAL SPECIFICATION. IN THIS RESPECT THE FACTS IN SEED'S CASE BEAR A STRONG RESEMBLANCE TO THE FACTS IN THE PRESENT CASE. LORD WENSLEYDALE SAID AT PP. 564-5 :-

LORD CAMPBELL ON THE TRIAL."

LORD WENSLEYDALE TO DOUBT, IF ONE OMITS HIS REFERENCE TO A FALSE SUGGESTION, WERE NOT UNLIKE SOME OF THE REASONS GIVEN BY JENKINS, J., AND THE COURT OF APPEAL IN THE PRESENT CASE; YET THESE REASONS DID NOT PREVAIL IN YOUR LORDSHIPS' HOUSE. LORD CHELMSFORD SAID, AT PP. 568-9:

LORD CHELMSFORD REFERRED TO THE DISCLAIMER AS "HAVING THUS NARROWED THE CLAIM AND HAVING FIXED IT TO THE PRECISE AND PARTICULAR MACHINE DESCRIBED". THAT IS, I THINK, A FAIR DESCRIPTION OF THE DISCLAIMER IN THE PRESENT CASE, IF ONE SUBSTITUTES "DRUGS" FOR "MACHINE".

LORDS, I DO NOT, OF COURSE, SUGGEST THAT THE FACTS IN SEED'S CASE WERE IDENTICAL WITH THE FACTS IN THE PRESENT CASE; BUT I DO SUGGEST THAT IF THE REASONING OF JENKINS, J., AND THE COURT OF APPEAL IN THE PRESENT CASE WERE CORRECT. SEED'S CASE WOULD HAVE BEEN DECIDED AGAINST THE PATENTEE.

LORD CHANCELLOR (LORD WESTBURY), REFERRING TO THE ACT 3 & 4 WILL. 4. C. 83, SAID AT P. 243:-

LORDS, IT SEEMS TO ME THAT IN THE PRESENT CASE THE APPELLANTS, BY THEIR DISCLAIMER ARE CARRYING OUT WHAT LORD WESTBURY DESCRIBES AS " THE " OBJECT OF THE ACT", IN THE FIRST SENTENCE OF THE PASSAGE JUST QUOTED, AND THAT LORD WESTBURY'S OBSERVATIONS ON THE ACT OF 1835 APPLY EQUALLY TO SECTION 22 OF THE PRESENT ACT.

LORD CRANWORTH, IN RALSTON'S CASE AT P. 252-3 SAID: -

LORDSHIPS" HOUSE, THE STATUTE PERMITTING AMENDMENT DID NOT EXPRESSLY PROVIDE THAT AN AMENDMENT BY DISCLAIMER SHOULD NOT " MAKE THE SPECIFICATION, AS AMENDED, CLAIM AN INDENTION SUBSTANTIALLY DIFFERENT FROM THE INVENTION CLAIMED BY THE SPECIFICA-" TION AS IT STOOD BEFORE AMENDMENT ". IN MY VIEW, HOWEVER, THE REASONS GIVEN BY YOUR LORDSHIPS' HOUSE IN RALSTON V. SMITH, TOGETHER WITH THE PLEA IN SEED V. HIGGINS AND ITS CONSIDERATION BY YOUR LORDSHIPS' HOUSE, SHOW THAT AN AMENDMENT WHICH CLAIMED A DIFFERENT INVENTION WAS REGARDED AS EXCLUDED FROM THE POWER OF AMENDMENT CONFERRED BY THE STATUTE. I THINK IT IS FAIRLY SAID BY THE APPELLANTS THAT THE PRESENT SECTION 22, WHICH IN SUBSTANCE APPEARED FIRST IN THE PATENTS DESIGNS AND TRADE MARKS ACT OF 1883, EMBODIED AND TO SOME EXTENT LIBERALISED THE LAW BEFORE THAT DATE. SO FAR AS I AM AWARE, THERE HAS BEEN, SINCE THE ACT OF 1883, NO CASE IN WHICH THE MEANING OF THE SECTION HAS BEEN CONSIDERED BY YOUR LORDSHIPS' HOUSE.

LORDS, A CONSIDERATION OF THE PRINCIPLES LAID DOWN IN RALSTON'S CASE, AS ILLUSTRATED BY SEED'S CASE, CONFIRMS ME IN MY VIEW THAT THE APPELLANTS ARE RIGHT IN THE PRESENT CASE.

LORDSHIPS. JENKINS, J., DESCRIBED THE QUESTION AS ONE OF CONSIDERABLE DIFFICULTY. HIS FIRST REASON FOR THINKING THAT THE PROPOSED AMENDMENT COULD NOT BE ALLOWED WAS STATED AS FOLLOWS :-

LORD JUSTICE, "MUST BE TO A LARGE EXTENT A MATTER OF FIRST IMPRESSION". HE ANSWERED IT ADVERSELY TO THE PRESENT APPELLANTS, AND HIS CONCLUSION WAS BASED ON THE VERY WIDE NATURE OF THE ORIGINAL CLAIM AND ON THE ABSENCE OF AN ALTERNATIVE CLAIM FOR "THE SPECIFIC SUBSTANCES". I THINK I HAVE ALREADY MADE CLEAR WHY I CANNOT ACCEPT EITHER OF THESE GROUNDS AS SUFFICIENT FOR A DECISION ADVERSE TO THE APPELLANTS.

LORDSHIPS' HOUSE, AND NO ONE OF THEM IS A CASE IN WHICH A PATENTEE IS SEEKING TO LIMIT HIS CLAIM TO THE "PREFERRED EMBODIMENT" SPECIFICALLY AND CLEARLY DESCRIBED IN HIS ORIGINAL SPECIFICATION. IN THESE CIRCUMSTANCES I DO NOT THINK IT WOULD BE RIGHT TO DETAIN YOUR LORDSHIPS WITH AN ANALYSIS OF ANY OF THESE CASES. I NEED ONLY SAY THAT I FIND NOTHING IN ANY OF THEM WHICH IS IN CONFLICT WITH THE ARGUMENT ADDRESSED TO YOUR LORDSHIPS BY COUNSEL FOR THE APPELLANTS.

LORDS, IN VIEW OF THE CONCESSION MADE, VERY RIGHTLY IN MY VIEW, BY MR. HEALD. IT IS NOT NECESSARY TO DISCUSS THE QUESTION OF DISCONFORMITY. IF THE MAJORITY OF THE HOUSE HAD AGREED WITH MY VIEWS AS TO "SUBSTANTIAL DIFFERENCE", IT WOULD HAVE BEEN NECESSARY FOR ME TO DEAL IN DETAIL WITH THE QUESTION WHETHER THE HOUSE SHOULD EXERCISE THE DISCRETION ARISING UNDER SECTION 22 BY ALLOWING THE APPELLANTS TO AMEND THEIR SPECIFICATION, AND, IF SO, WHAT TERMS SHOULD BE IMPOSED UPON THEM "AS TO COSTS, ADVERTISEMENTS OR OTHERWISE". AS THE MAJORITY OF YOUR LORDSHIPS' HOUSE THINK, CONTRARY TO MY OWN OPINION, THAT THE APPEAL SHOULD BE DISMISSED ON THE GROUND THAT THE PROPOSED AMENDMENTS OFFEND AGAINST THE PROVISO TO SECTION 22, IT IS UNNECESSARY FOR ME TO EXPRESS A CONCLUDED VIEW ON ANY OF THESE QUESTIONS.

LORD MACDERMOTT

LORDS,

LORDS, WHETHER THE DIFFERENCE BETWEEN THE INVENTIONS WAS SUBSTANTIAL IS SO MUCH A QUESTION OF FACT AND DEGREE THAT, UNLESS CONVINCED THAT THE LEARNED JUDGE WAS CLEARLY WRONG, I WOULD BE RELUCTANT TO DISTURB HIS CONCLUSION ON THE MATTER, AND THAT ALL THE MORE BECAUSE, IF I MAY SAY SO, HIS JUDGMENT REVEALS A MASTERLY GRASP OF THE FACTS AND CIRCUMSTANCES THAT GO TO MARK AND MEASURE THE DIFFERENCE. I HAVE, HOWEVER, NO DOUBT ON THIS QUESTION. I AGREE WITH JENKINS J AND THE COURT OF APPEAL THAT THE DIFFERENCE BETWEEN THE INVENTIONS IS SUBSTANTIAL. I DO NOT REST THAT VIEW ON ANY OF THE NUMEROUS AUTHORITIES CITED WHICH I HAVE NOT FOUND SUFFICIENTLY AKIN TO BE HELPFUL. I REST IT SIMPLY ON AN EXAMINATION OF THE TRUE NATURE OF EACH INVENTION, AS I SEE IT, AND A COMPARISON OF THE CONCLUSIONS REACHED. TO MY MIND THE DIFFERENCE REVEALED IS SO WIDE AND FUNDAMENTAL THAT IT CANNOT RANK AS OTHER THAN SUBSTANTIAL.

LORD REID

LORDS,

LORD WESTBURY SAID, "THE OBJECT OF THE ACT AUTHORISING DISCLAIMERS WAS PLAINLY THIS, THAT WHEN YOU HAVE IN YOUR SPECIFICATION A SUFFICIENT AND GOOD DESCRIPTION OF A USEFUL INVENTION, BUT THAT DESCRIPTION IS IMPERILLED OR HAZARDED BY SOMETHING BEING ANNEXED TO IT WHICH IS CAPABLE OF BEING SEVERED, LEAVING THE ORIGINAL DESCRIPTION, IN ITS INTEGRITY, GOOD AND SUFFICIENT, WITHOUT THE NECESSITY OF ADDITION, THEN YOU MIGHT BY THE OPERATION OF A DISCLAIMER LOP OFF THE VICIOUS MATTER, AND LEAVE THE ORIGINAL INVENTION AS DESCRIBED IN THE SPECIFICATION UNTAINTED AND UNINJURED BY THAT VICIOUS EXCESS. BUT IT NEVER WAS INTENDED THAT YOU SHOULD CONVERT A BAD SPECIFICATION, IN THE SENSE OF ITS NOT CONTAINING ANY DESCRIPTION OF ANY USEFUL INVENTION AT ALL INTO A GOOD SPECIFICATION BY ADDING WORDS THAT WOULD CONVERT WHAT HAS BEEN PROPERLY CALLED IN THE COURT BELOW, 'A BARREN AND UNPROFITABLE GENERALITY,' INTO A SPECIFIC AND DEFINITE PRACTICAL DESCRIPTION" I THINK THAT THESE AUTHORITIES SUFFICIENTLY ESTABLISH THE PRINCIPLE TO BE FOLLOWED AND I KNOW OF NO AUTHORITY WHICH CONFLICTS WITH THEM. IN THIS CASE NO NEW MATTER IS SOUGHT TO BE INTRODUCED BY THE APPELLANTS' PROPOSED AMENDMENT. DOES IT SEEK TO MAKE SOMETHING AN ESSENTIAL PART OF THE INVENTION WHICH WAS NOT SO BEFORE? I DO NOT THINK SO. THE TWO SUBSTANCES WERE I THINK A PART AND AN ESSENTIAL PART OF THE INVENTION ORIGINALLY CLAIMED. THEY WERE MEMBERS OF THE GROUP OR CLASS CLAIMED AND WERE THE ONLY MEMBERS PARTICULARLY REFERRED TO. I DO NOT SEE HOW IT CAN BE SAID THAT THEY WERE NOT AN ESSENTIAL PART OF THAT INVENTION. DOES THE AMENDMENT INVOLVE ANY NEW ELEMENT OF SELECTION? AGAIN I DO NOT THINK SO. THE PURPOSE OF AN AMENDMENT OF THIS CHARACTER IS TO DISCARD THOSE PARTS OF THE INVENTION ORIGINALLY CLAIMED WHICH ARE BAD AND RETAIN WHAT IS GOOD. IF THE PARTS SOUGHT TO BE RETAINED ARE DISTINGUISHED IN THE ORIGINAL SPECIFICATION BY FORMING THE SUBJECT OF A SEPARATE CLAIM THERE IS GENERALLY NO DIFFICULTY. THE DIFFICULTY ARISES WHEN THE PATENTEE WISHES TO PICK OUT FROM A CLAIM WHICH IS TOO WIDE PARTS OR INSTANCES WHICH CAN BE THE SUBJECT OF A VALID PATENT. IN ONE SENSE IT MIGHT BE SAID THAT YOU CAN NEVER DISCLAIM DOWN TO SOMETHING WHICH WAS NOT THE SUBJECT OF A SEPARATE CLAIM IN THE ORIGINAL SPECIFICATION WITHOUT MAKING A NEW SELECTION. BUT IT IS CLEAR FROM AUTHORITY THAT THERE ARE CASES WHERE IT IS PERMISSIBLE TO DISCLAIM DOWN TO A CLAIM WHICH WAS NOT SET OUT IN THE ORIGINAL SPECIFICATION : INDEED EVEN IN THE CASE OF A SELECTION PATENT THERE IS HIGH AUTHORITY FOR THIS. IN I.G. FARBENINDUSTRIE A.G.'S PATENTS, MAUGHAM, J. (AS HE THEN WAS), SAID: "IT IS TRUE THAT IN SUCH A CASE" (WHERE THERE ARE SEPARATE CLAIMS IN THE ORIGINAL SPECIFICATION) "THE PATENTEE BY SEPARATING HIS CLAIMS HAS ENABLED THE COURT SEPARATELY TO CONSIDER THE INVENTIONS CLAIMED TO BE THE BASIS OF THE PATENT. BUT OUGHT SUCH A MATTER TO DEPEND MERELY ON THE FORM OF DRAFTING? IF, AS IN THIS CASE, THE CLAIMS COULD ORIGINALLY HAVE BEEN SEPARATED UP WITHOUT DIFFICULTY SO THAT THE EXCESS MATTER SOUGHT TO BE DISCLAIMED COULD READILY BE TREATED AS INCLUDED IN A SEPARATE CLAIM, SHOULD NOT THE AMENDMENT BE ALLOWED UNDER SEC. 22? ON THE WHOLE I INCLINE TO THAT VIEW, AND I SHOULD PRIMA FACIE BE DISPOSED TO ALLOW THIS AMENDMENT." IF A PATENTEE SEEKS TO PICK OUT FROM A CLAIM SOMETHING WHICH IS NOT DISTINGUISHABLE IN HIS ORIGINAL SPECIFICATION FROM THE REST OF THE SUBJECT MATTER OF THE CLAIM THEN I THINK THAT HE IS SEEKING TO INTRODUCE A NEW SELECTION AND TO THAT EXTENT A DIFFERENT INVENTION. BUT HERE I THINK THAT THE TWO SUBSTANCES WERE DISTINGUISHED IN THE ORIGINAL SPECIFICATION BY THE INCLUSION IN IT OF FULL PARTICULARS OF THEIR MANUFACTURE AND THERAPEUTIC EFFECT. IN RALSTON V. SMITH LORD CRANWORTH SAID, "THE DISTINCTION WAS VERY CLEARLY POINTED OUT IN THE CASE OF SEED V. HIGGINS BEFORE THIS HOUSE, THAT YOU MAY DISCLAIM SOMETHING WHICH LEAVES UNTOUCHED A DESCRIPTION WHICH IS IN ITSELF PERFECT; BUT THAT WHERE YOU HAVE AN IMPERFECT DESCRIPTION, YOU CANNOT SAY BECAUSE IT IS (ACCORDING TO THE LANGUAGE OF ONE OF THE CASES) A MERE IMPRACTICABLE GENERALITY, 'I EXCLUDE EVERYTHING EXCEPT ONE SINGLE CASE, WHICH THOUGH INVOLVED IN IT, COULD NOT BY ANY REASONABLE INVESTIGATION HAVE BEEN DISCOVERED BY AN ORDINARY PERSON.'" I THINK THAT THE APPELLANTS' AMENDMENT WOULD LEAVE UNTOUCHED A DESCRIPTION OF THE TWO NAMED SUBSTANCES WHICH IS IN ITSELF PERFECT.

LORDSHIPS HAD BEEN OF OPINION THAT THE AMENDMENT IS COMPETENT IT WOULD HAVE BEEN NECESSARY TO GO ON TO CONSIDER WHETHER AS A MATTER OF DISCRETION IT SHOULD BE ALLOWED. THAT QUESTION IS NEITHER SIMPLE NOR EASY TO ANSWER AND IN THE CIRCUMSTANCES I THINK THAT IT WOULD BE INADVISABLE TO EXPRESS ANY OPINION ON IT. I SHALL THEREFORE SAY NO MORE THAN THAT I AM UNABLE TO AGREE THAT THE APPEAL SHOULD BE DISMISSED ON THE GROUNDS WHICH YOUR LORDSHIPS HAVE STATED.

LORDS, BY THE LORDS OF APPEAL SITTING IN THE HOUSE OF LORDS DURING THE DISSOLUTION OF PARLIAMENT, BY VIRTUE OF A WRITING BY HIS MAJESTY THE KING UNDER HIS SIGN MANUAL, DATED THE 3D DAY OF FEBRUARY 1950 PURSUANT TO THE PROVISIONS OF THE APPELLATE JURISDICTION ACT, 1876, THAT THE SAID ORDER OF HIS MAJESTY'S COURT OF APPEAL, OF THE 10TH DAY OF DECEMBER, 1948. COMPLAINED OF IN THE SAID APPEAL, BE, AND THE SAME IS HEREBY, AFFIRMED, AND THAT THE SAID PETITION AND APPEAL BE, AND THE SAME IS HEREBY, DISMISSED THIS HOUSE: AND IT IS FURTHER ORDERED, THAT THE APPELLANTS DO PAY, OR CAUSE TO BE PAID, TO THE SAID RESPONDENTS THE COSTS INCURRED BY THEM IN RESPECT OF THE SAID APPEAL, THE AMOUNT THEREOF TO BE CERTIFIED BY THE CLERK OF THE PARLIAMENTS.