Synthon BV v SmithKline Beecham plc
A prior disclosure anticipates a patent only if it both discloses the invention and enables a skilled person to perform it, which are distinct requirements.
Facts
SmithKline Beecham held a patent for a crystalline form of an anti depressant drug, paroxetine methanesulfonate. Synthon had earlier filed a patent application which described the same salt in crystalline form, but contained inaccurate information about how to make it. Synthon argued that its earlier application anticipated SmithKline's patent, so the patent was invalid for lack of novelty.
Legal principle
The House of Lords held that SmithKline's patent was invalid. Lord Hoffmann said that there are two requirements for anticipation: disclosure, meaning that the prior art must disclose subject matter which, if performed, would necessarily result in an infringement of the patent, and enablement, meaning that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure. These requirements must be considered separately. The skilled person could have made the crystalline form by routine trial and error, despite the inaccuracies in Synthon's application, so the invention was both disclosed and enabled.
Related cases on patents: patentability and validity
- Aerotel Ltd v Telco Holdings Ltd; Macrossan's Application [2006] EWCA Civ 1371, [2007] RPC 7
- Biogen Inc v Medeva plc [1997] RPC 1
- Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, [2008] RPC 28
- Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2024] EWCA Civ 825
- Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13
- Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] RPC 6
- Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC 76
- Oliver Brüstle v Greenpeace eV Case C-34/10, [2011] ECR I-9821
Studying intellectual property law? Our tutors help you understand and apply cases like this in essays, problem questions and exams. Request a quote or browse our law notes.
This summary is for study and revision and is not legal advice. Although our case summaries are checked for accuracy, we do not guarantee that they are free from errors or omissions. Always read the full judgment for the court's reasoning.
