For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 7 July 2014

Pfizer not privy to patent in Jamaica

This Kat was delighted to spot, courtesy of a Tweet from Carpmaels & Ransford, an extraordinary case in the Privy Council of interest primarily to patent necrophiliacs, concerning as it does the Jamaican Patent Act 1857 (yes, really), which apparently bears some similarities to the United Kingdom Patent Law Amendment Act 1852.  As well as tweeting about it, Glyn Truscott kindly agreed to pen a guest blogpost about it, and so here it is.

Seventeenth Century case law, invention by importation, local novelty and ten-year patent terms are not part of the day-to-day considerations of most EP/UK attorneys.  However, all of these topics are considered in a compact (44 paragraph) recent judgment from the Privy Council (delivered by Sir David Kitchin), on appeal from the Court of Appeal of Jamaica (Pfizer Limited (Appellant) v Medimpex Jamaica Limited and another (Respondents); [2014] UKPC 20).  Paragraph 10 of the judgment summarises the unusual nature of the case, from an EP/UK perspective:
"10.       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 17th century in the case of The Clothworkers of Ipswich (1614) 78 ER 147…"
Amlodipine
The case relates to Amlopidine besylate, sold by Pfizer as Norvasc for the treatment of high blood pressure.  The invention was made in 1986 and patent applications were filed in a number of countries.  In 1992 an attorney in Jamaica, Mr Robinson, applied in his name for a Jamaican patent for this drug on instructions from Pfizer (the appellant), on the basis that this drug was not previously known in the island (i.e. as assessed under local novelty).  Once granted as Patent No. 3247 in 2002, Mr Robinson assigned the patent to Pfizer for a nominal sum.  Pfizer then brought infringement proceedings against the respondents (Medimpex Jamaica Limited and Lasco Distributors Limited), who had been importing and selling generic amlopidine besylate in Jamaica since 2001.  The respondents counterclaimed for invalidity.  It is these proceedings that resulted in an appeal to the Privy Council.

The first issue in this case is whether, by filing the application in his name, Mr Robinson acted on his own behalf or on Pfizer's behalf (as its attorney).  This was closely related to the second issue - whether the expiration of a patent for the same invention in another country (here, Egypt, where patent term at the time was only ten years) before grant of the Jamaican patent rendered the patent invalid under Section 29 [Merpel will post the wording of the section at the end of this post] of the Jamaican Patent Act 1857, or whether the applicant had to be the same in the foreign and the Jamaican patent for this provision to take effect.

At first instance, the trial judge held that Mr Robinson was the “true and first inventor” in Jamaica, but did not consider the capacity in which he acted.  He found the patent to be invalid because he accepted that the expiry of the corresponding Egyptian patent, prior to grant of the Jamaican patent, rendered the Jamaican patent invalid (irrespective of the identity of the applicants). The Jamaican Court of Appeal agreed with the Judge on the foreign expiry issue but also held that Mr Robinson had acted as attorney for Pfizer and so the patent was invalid for that reason too.  Pfizer then appealed to the Privy Council, which remains the final appellate court for civil appeals from Jamaica.

How did we get to Egypt?
asks Merpel
The Privy Council considered the second issue first.  It found that both the first instance judge and the Court of Appeal erred in their findings that the expiry of the Egyptian patent rendered the Jamaican patent invalid regardless of the respective applicants.  At paragraph 30, The Privy Council found that the application of a local novelty requirement, and the concept of invention by importation:
“…is entirely rational.  It encourages the importation of foreign inventions into Jamaica and so promotes the setting up of new industries in the island.  It also encourages foreign inventors who have taken out patents for their inventions to import those inventions into Jamaica as soon as possible”.
Having decided that the Egyptian patent expiry did not necessarily render the patent invalid, the case then turned on the first issue – in what capacity did Mr Robinson act?  If he was Pfizer’s attorney, then the applicant was the same for the Egyptian and Jamaican Patents and so Section 29 would bite.  Pfizer argued that Mr Robinson was the applicant, and not the attorney, because (i) a Power of Attorney was not filed, (ii) Pfizer was not “an absentee” that required representation, and (iii) Mr Robinson was named as the applicant and the relationship between the Mr Robinson and Pfizer “is neither here nor there”.    However, the Privy Council decided at paragraph 41 that the difference between naming the attorney or the principal as applicant was an issue of form and not substance.  In these situations:
“The attorney has neither identified a new and useful invention abroad nor decided to import that invention into Jamaica.  He is still acting throughout on the instructions of the principal and consequently holds the application to the principal’s order.”
Accordingly, it held that Mr Robinson applied for the Patent as Pfizer’s attorney, with the result being that Pfizer’s earlier Egyptian patent had the same applicant and so Section 29 invalidated the Jamaican patent.  Pfizer’s appeal was unanimously dismissed.

Merpel adds that Section 29 reads as follows, with the (to her) important wording emboldened:
No applicant shall be deprived of his right to a patent in this Island upon the like proceedings being had in all respects as in case of an original application for his invention by reason of his having previously taken out Letters Patent therefor in any other country:
Provided, that such invention shall not have been introduced into public and common use in this Island prior to the application for a patent therein; and that the patent granted in this Island shall not continue in force after the expiration of the patent granted elsewhere; and that where more than one such patent or like privilege is obtained abroad, then immediately upon the expiration or determination of the term which shall first expire or be determined of such several patents or like privileges, the patents granted in this Island shall cease to be in force:
Provided further, that no Letters Patent for or in respect of any invention for which any such patent or like privilege as aforesaid shall have been obtained elsewhere, and which shall be granted in this Island after the expiration of the term for which such patent or privilege was granted or was in force shall be of any validity
The IPKat thanks Glyn for this post, and as usual invites comments, and perhaps reminiscences from his older readers.

8 comments:

Anonymous said...

Credit to Pfizer's patent attorneys for trying this one on. Companies that rely on outside counsel for everything don't know what value they are missing.

Ron said...

Funnily enough, only a couple of days ago I was reading a chapter in a book about the development of the electric light industry which mentioned that the tying of the term of a patent to the expiry of corresponding patent in another country used to be a feature of US patent law. Edison's master patent for the electric light lamp had been curtailed by 2 years due the the expiry of the corresponding Canadian patent, and lobbying by Edison and other large companies whose patents had suffered the same fate led to a change in the law w.e.f. 01 Jan 1898 whereby the term was unaffected as long as a US application was filed within 7 months of the earliest foreign application's filing date.

Anonymous said...

Get in quick - the new act will enter force on 13 September 2014. However until then New Zealand patent law still also has local novelty, allowing patent by importation. Availability on the internet is, however, novelty destroying.

Roufousse T. Fairfly said...

There is something EXTREMELY odd about this decision.

Is it really possible that it occurred to neither the Lords nor the parties that Jamaica is a WTO member, and therefore committed to comply with certain requirements ? In order to be admitted to the club, it had to ratify TRIPS, which entered into force on the island on 01.01.1995.

TRIPS Art. 2 provides:

1. In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).

Paris Article 4bis very plainly prohibits linking the fate of a patent in one country to that of any of its siblings elsewhere.

TRIPS Art. 70 defines which IP titles are covered by the treaty:

2. Except as otherwise provided for in this Agreement, this Agreement gives rise to obligations in respect of all subject matter existing at the date of application of this Agreement for the Member in question, and which is protected in that Member on the said date, or which meets or comes subsequently to meet the criteria for protection under the terms of this Agreement.

My reading of TRIPS Art. 2 is that the country must respect the Paris Convention, whether it is a party to it or not. Incidentally, Jamaica formally adhered to the Paris Convention in 1999. BTW, a handful of US applications do claim JM priority, but I was unable to find in their wrappers any priority certificates. Is it actually possible to obtain such a document in Kingston, when the 1975 Patents Act is still in force?

Thus, the Egyptian patent should have been irrelevant to the discussion.

In many countries, international treaties are automatically a part of national law, and have precedence to their implementation in national law. Is Jamaica such a country? I find it surprising that it still relies on that antiquated, and clearly non-compliant law, practically two decades after TRIPS.

If Jamaica had obtained extensions for the application of TRIPS much beyond the couple of years accorded to LDCs, then the decision should have made a mention of it.

TRIPS Art. 33 Term further demands:

The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.

So, since the patent filed in 1992 was pending when TRIPS entered in force, it should have expired in 2012 at the earliest, and not 2002. The US dragged Canada before the WTO panel over precisely this issue, to extend protection for still active patents from 17 to 20 years.

I find it actually astounding that "ausgerechnet" Pfizer, who was very much behind the negotiation and adoption of TRIPS in the eighties and nineties, didn't invoke this document.

TRIPS doesn't impose any particular standard for novelty, inventive step, or utility, but only requires the signatory to have one. However, I wonder whether it could be successfully argued that local novelty runs against Art. 27:

1. ... patent rights [shall be] enjoyable without discrimination as to the place of invention ...

Why "inventing" in Jamaica be advantaged over "inventing" abroad?

Anonymous said...

How can a 'patent of importation' have been invented abroad?

Darren Smyth said...

Dear Roufousse

Thank you for your detailed comment. I was completely in agreement with your logic until I noticed that the patent was filed in Jamaica in 1992, before the dates that you give either for joining WTO or Paris Convention. I don't see a difficulty if the obligations taken on did not apply retrospectively to cases already filed. This would appear to get rid of the oddness.

Best wishes

Darren

Dear Anon at 08:47

A patent of importation is always invented (using the term in the usual modern sense) abroad. The person taken to be the "inventor" in the territory of importation has not "invented" it in the modern sense, but has brought it into the territory of importation for the first time, which under certain old patent systems using local novelty allows that person to be considered as having "invented" it for that territory.

D

Anonymous said...

Darren,
you misunderstand my point as I was commenting in response to Mr Firefly who asked:

"Why "inventing" in Jamaica be advantaged over "inventing" abroad?"

Clearly, the Pfizzer invention was invented abroad and hence was patented in Jamaica (no she went of her own accord) as a patent of importation. To qualify as a patent of importation the discrimination is unavoidable as importing into Jamaica (like I said first time round, No) can only give territorial rights in Jamaica.
Anon at 8:47

Tim said...

@ Darren
As Roufousse already indicated, art. 70(2) TRIPS seems to stipulate that TRIPS applies in principle retroactively to earlier filed patent applications. Although there is a complicated system of exemptions for least developed countries.

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