Use of experiments in attacking the novelty of a patent

The Court of Appeal earlier this week, in the case of Synthon BV v. Smithkline Beecham plc: [2002] EWCA Civ 1162, considered the admissibility of experiments in attacks on the novelty of a patent under sections 2(2) and 2(3) of the Patents Act 1977 ("the Act"). It held that experiments can be used in an attack based on section 2(3) of the Act, in the same way that they can be used in an attack under section 2(2) of the Act.

The appellant was seeking to overturn the decision at first instance, in which Jacob J. had allowed the claimant to rely on experiments to establish what the teaching of its earlier patent application was, even though such application had not been published prior to the priority date of the appellant's patent. The experiments were therefore able to form part of the state of the art for the purposes of the attack on novelty.

The appellant's argument concerned the different wording of sections 2(2) and 2(3) of the Act. Section 2(2) provides that all matter which has been made available to the public before the priority date of the patent-in-suit will form part of the state of the art. Section 2(3) of the Act, however, provides that information contained in a patent application that is filed before, but published after, the priority date of the patent-in-suit will only form part of the state of the art if the matter was "contained in the application for that other patent both as filed and as published." The appellant argued that this only included the content or matter that is clear on the face of the application, and not matter only evident after conducting experiments.

The Court of Appeal held that matter contained in an application for the purposes of section 2(3) of the Act includes all matter that is taught by the application. Where a product was inevitably produced as a result of the process taught, such product formed part of the state of the art. The defendant's appeal was thus dismissed.

The judgment is not yet publicly available. If you would like a copy of the judgment, once available, or would like to discuss matters contained in this case, please contact Nick Beckett on at [email protected] or on +44 (0)20 7367 2490.