Bird & Bird wins major patent battle for Synthon



Firm triumphs again in House of Lords as 4 year patent battle comes to end

International law firm Bird & Bird has just won a major case for Dutch pharmaceutical company, Synthon B.V. (Synthon) against SmithKline Beecham plc (SKB) in the UK’s highest court. The House of Lords ruled today in Synthon’s favour bringing to an end a hotly contested 4 year battle which has also helped clarify the test for “novelty” in patent law. This is the second major patent case Bird & Bird has won in the House of Lords, in the space of twelve months.

The case itself concerns the validity of a patent for a compound (paroxetine mesylate) which incorporates the active ingredient for one of the most widely prescribed antidepressant drugs in the world. The judge today ruled that UK patent no. 2 336 364 owned by SmithKline Beecham plc, for the compound paroxetine mesylate, was invalid and in doing so upheld an appeal brought by Synthon B.V. against the decision of the English Court of Appeal which was given in June 2003.

In industries where patents are important, it can often be the case that applications for the same invention are filed by competitors within months, or even days of each other. This decision importantly clarifies what the first applicant needs to show in order to obtain their patent, over the second applicant.

In this case, the validity of SKB’s UK patent had been challenged by Synthon, who asserted that their own, pre-existing patent application for paroxetine mesylate “anticipated” the SKB patent. Mr Justice Jacob (now Lord Justice Jacob) agreed in his English High Court decision back in December 2002. However, SKB successfully appealed against that decision to the English Court of Appeal.

Lord Hoffmann, who gave the main judgment of the Lords, explained that the Synthon application “plants a flag” on the invention of crystalline paroxetine mesylate. However, in order for their application to invalidate the SKB patent, they also had to demonstrate that their application provided enough information to enable a suitably technically qualified person to make this crystalline compound. Critically, Lord Hoffmann found that such a person was entitled to utilise their own general knowledge in the field to supplement the information contained in the patent application. Therefore, he made a clear distinction between what is “disclosed”, on the one hand, and what is a sufficient description (and hence “enabling”), on the other.

The European Patent Office revoked the equivalent European SKB patent (EP 970 955) in December 2004 and Synthon are therefore delighted that, in line with the EPO decision, the House of Lords has now reversed the decision of the Court of Appeal, also confirming the original finding of Mr Justice Jacob.

The Bird & Bird team was led by partners Morag Macdonald and Robert Williams, assisted by Clare Wilson. Bird & Bird instructed Simon Thorley QC and Piers Acland.

For more information on this please contact Morag Macdonald or Robert Williams on 020 7415 6000.

For more information about Bird & Bird please contact Natalie Arestis, PR Manager on 020 7905 6248.