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.