資料２ イギリス
Unit ed Kingdom Jeremy Phillips
1.1 M onsanto Co v Stauffer Chemical Co and another
1.2 [1985] Report s of Patent Cases 515. 31 July 1984 (Patent s Court), 11 June 1985 (Court of Appeal).
1-3-1 Summary
In an act ion for patent infringement relat ing to a herbicide, M onsant o obtained interim injunct ive relief against Stauffer, restraining Stauffer from furt her using or selling it s allegedly infringing TOUCHDOWN product . After t he injunct ion had been issued by the t rial judge and affirmed by the Court of Appeal, Stauffer sought t o vary t he terms of the injunction by t he addit ion of t he proviso t hat
“ Not hing in this Order shall prevent t he Defendant s … from doing any of the said act s for t he purposes of
(i) carrying on field t rials by t hemselves or by ot hers of t heir TOUCHDOWN herbicide (ii) performing experiment s by t hemselves or by others for the purposes of t his Act ion or Counterclaim ”.
Before t hese proceedings began, Stauffer had carried out some field t rials in t he Unit ed Kingdom, obtaining limited safet y clearance for use post-harvest and in non-crop areas;
Stauffer how ever w ished t o obtain furt her safet y clearances for use of TOUCHDOWN before harvest time. There w ere t hree different proposed t rials:
(i) t rials carried out by Stauffer ’s ow n personnel at it s ow n farm;
(ii) t rials carried out by St auffer ’s ow n personnel on ot her farms;
(iii) t rials carried out by third part ies t hat might become cust omers.
Stauffer maintained t hat all t hese t rials w ere permitted experiment s wit hin t he Patent s Act 1977, s.60(5)(b). M onsanto opposed t he applicat ion t o vary t he injunct ion on t he basis t hat t he alleged experiment s w ere not t rue experiment s but had a clear commercial purpose, t o obtain clearance for event ual sales and t o convince prospect ive cust omers t hat
TOUCHDOWN was safe. The t rial judge, M r Just ice Falconer, dismissed t he applicat ion. In his view,
t he proposed t rials w ere directed at t he acceptance of a commercial embodiment of Stauffer ’s product ;
t he phrase “experiment al purposes relat ing t o the subject matter of t he invent ion” in
s.60(5)(b) limited t he defence to experiment s that w ere directed t o t he patented invent ion as such, not to it s commercialisat ion;
even if t his were not so, Stauffer could not supply their allegedly infringing product t o t hird part ies for the purpose of carrying out such t rials. Any permitted experiment s had t o be private and not involve t hird part ies;
permit ted experiment ation had t o be small-scale, having regard t o t he nat ure of the subject-matter of t he invent ion, and done for t he purpose of finding somet hing out about t he invent ion.
1-3-2 Reason for appeal
Stauffer maintained t hat t he construct ion placed upon s.60(5)(b) was unduly narrow and t hat t heir proposed t rials fell w it hin it s purview.
1-3-3 Judgment
The Court of Appeal dismissed t he appeal, making one small modification t o t he Order so as t o provide t hat it should not extend to act s done for experimental purposes relat ing t o the subject mat ter of t he invent ion in laborat ories or glass-houses in t he United Kingdom or in Stauffer ’s farm.
1-3-4 Analysis of judgment
The Court of Appeal declined t o consider the authorit ies relat ing t o judicial decisions t hat w ere given in the United Kingdom before t he enact ment of t he Patent s Act 1977, s.60(5)(b).
Since the Patent s Act 1977 w as enact ed so as to implement t he provisions of the European Patent Convent ion, no guidance could be gained by t he consideration of case law relat ing t o t he law as it st ood before t he implem entat ion of t hat Convent ion.
The Court of Appeal did not consider that t he fact t hat t he alleged experimentat ion had a commercial objective prevented it from being for an “ experimental purpose”. The w ord
“ experiment ” was an ordinary English w ord, not a legal term of art , and it s ordinary meaning did not exclude a commercial object ive.
1-3-5 Effect and evaluat ion of judgment
Experiment s can be performed even w hen patented products, so long as the parameters of t he Court of Appeal’s guidance in t his decision are respected.
Experiment s w hich designed to elicit new know ledge — t hat is, w hich can be considered t o advance scient ific know ledge — w ill in principle alw ays be exempted. How ever, those experiment s w hich are performed purely for commercial purposes and w hich have no know ledge-based content , w ill in principle always infringe.
1-3-6 Relat ion t o (i) exemption of research or experimental use and (ii) award grant ing of unused patent
This decision appears t o be neut ral w it h regard t o the grant ing of right s t o use an unused patent .
1-4 Comment and other descript ion
The sentiment has been expressed in some quarters t hat the result of t his decision is unclear and that furt her clarificat ion or reform is needed, w het her t hrough amendment of the European Patent Convent ion or t hrough a Direct ive w it hin t he European Union. The fact t hat neit her of t hese event s has come t o pass w ould suggest eit her t hat no lack of clarit y is perceived in legislat ive circles or that , w hile such a lack of clarit y is perceived, t here is no consensus as to the manner of it s resolut ion.
1-5 reference ID number 1
Unit ed Kingdom/ Jeremy Phillips
1.1 Smit h Kline & French Laborat ories Limited v Evans M edical Limited 1.2 [1989] Fleet St reet Report s 513, 10 November 1988 (Patent s Court).
1-3-1 Summary
In a patent infringement action relat ing t o the drug cimet idine, (SK& F) relied on t hree patent s ( t he Generic patent , t he M aster patent and t he Polymorph patent ). The M aster patent was a patent of addit ion to t he Generic patent and bot h of t hese w ere endorsed licenses of right before t he date of this applicat ion. Evans was an applicant for a licence of right under t hese t w o patent s.
SK& F applied for summary judgment in respect of infringement of t he M aster and Generic patent s. In response, Evans applied t o st rike out t he act ion. Before t hese proceedings, SK& F had applied t o amend the Polymorph patent , w hich w as due t o expire in some four years t ime. This applicat ion was opposed by Evans w hich, in t he course of opposit ion, had
conducted in-house experiment s t o support evidence given by stat utory declaration in t hose proceedings. Those experiment s involved t he high-speed tablet t ing of a substant ial quantit y of cimet idine tablet s in the same dosage forms as those then sold by SK& F; t he cimet idine w it h w hich t hese t ablet s had been made had not been purchased from SK& F.
Evans gave evidence of t hese experiment s in t he amendment proceedings. Thereafter and before t he evidence in t he amendment proceedings had closed, SK& F inst it ut ed t he present infringement proceedings and, in t heir particulars of infringements, pleaded t he experiment s w hich Evans had performed in t he Patent Office amendment proceedings, t he import of t he material for t hem and t he fact t hat Evans w as an applicant for licences of right s under t he M aster and Generic patent s, asking t hat t he relevant inference be draw n from t his evidence.
Evans admit ted t he acts ident ified in t he pleading but submitted inter alia t hat t he Patent s Act 1977, s.60(5)(b) provided a defence of experiment al use.
1-3-2 Reason for appeal
There was no appeal in t his case, w hich relates t o t he init ial proceedings.
1-3-3 Judgment
The Patent s Court dismissed bot h SK& F’s applicat ion for summary judgment and Evans’
applicat ion for SK& F’s action t o be struck out . 1-3-4 Analysis of judgment
The Court first stat ed categorically t hat there was no quest ion of a general implied consent on the part of a patentee t o permit t he public to conduct experiment s for the purpose of examining a patent and, if appropriate, challenging it s validit y.
The Court t hen examined t he scope of t he Patent s Act 1977, s.60(5)(b) it self. It concluded t hat w hat is regarded as experiment al use must depend on t he fact s of each case but could
include experiment s t hat w ere designed w it h a commercial end in view :
If an act is to be permit ted by s. 60(5)(b) it must be done for purposes relat ing t o t he subject matter of t he invent ion and w it hin the claims of the patent alleged t o be infringed.
Sect ion 60(5)(b)covered acts done for experimental purposes, including experiment s wit h a commercial end in view —but t he purpose had t o relat e t o t he claimed subject-matter of t he patent in suit in the sense of having a real and direct connect ion w it h t hat subject-matter.
Since Evans’ experiment s repeated an example of t he M aster patent w it h a view t o challenging t he Polymorph patent , s.60(5)(b) did not provide a defence to infringement of t he Generic patent .
1-3-5 Effect and evaluat ion of judgment
The judgment in t his case applied the same principles as M onsant o v Stauffer (above), but emphasised t hat they did not enable s.60(5)(b) t o permit experiment s t hat w ere conducted for the purpose of challenging a granted patent .
1-3-6 Relat ion t o (i) exemption of research or experimental use and (ii) award grant ing of unused patent
This decision demonst rates t hat experiment ation for t he purpose of deciding w het her to apply for a licence t o use an unused patent w ould not be permit ted.
1-4 Comment and other descript ion
Since the infringing acts in t his instance relat ed t o tests t hat w ere conduct ed for t he purposes of challenging t he validit y of a patent , it w ould appear reasonable t hat test s t hat did not obviously affect t he market posit ion of patented product s or t he supply of patented services w ere of no relevance t o t he market and should t herefore be permit ted. This line of argument was firmly blocked in this case.
1-5 reference ID number 2
United Kingdom/ Jeremy Phillips
1.1 M cDonald and anot her v Graham
1.2 [1994] Report s of Patent Cases 407, 16 December 1993 (Court of Appeal).
1-3-1 Summary
M cDonald was t he propriet or of patent relat ing t o a sheet of printed material int ended for publicit y purposes and w hich, w hen folded, w as the shape and size of a credit card. Graham, w ho w as engaged as a marketing consultant by M cDonald, procured a st ock of such product s.
In subsequent patent infringement proceedings before t he Patent s County Court , in w hich t he act s complained of included t he supply of cards t o t hird part ies, Graham was held liable.
1-3-2 Reason for appeal
Graham appealed on t he ground t hat , among ot her t hings, t hat he w as not committ ing an infringement in t hat product s in his possession w hich he supplied t o t hird parties w ere supplied for “experiment al purposes” under t he Patent s Act 1977, s.60(5)(b).
1-3-3 Judgment
Dismissing t he appeal, the Court of Appeal considered t hat , on t he evidence, Graham had clearly kept the cards in st ock for t he purpose of his ow n business, in order t o make such use of them as was beneficial t o do so. Such keeping and making use of the product s for
non-private and overt ly commercial purposes could not be regarded as use for experiment al purposes relat ing t o the subject matter of t he patent .
1-3-4 Analysis of judgment
The reasoning of the Court of Appeal was based as much on an appraisal of t he evidence as an analysis of the law, concluding t hat such keeping and making use of t he product s for non-private and overt ly commercial purposes could not be regarded as use for experiment al purposes relat ing t o the subject matter of t he patent .
1-3-5 Effect and evaluat ion of judgment
This decision is of litt le significance. The “experimental purposes” defence appears t o have been raised for the first time at t he appellate level; it w as quite unsupport ed by t he evidence and did not require any analysis of development of the doct rine relat ing t o the s.60(5)(b) defence.
1-3-6 Relat ion t o (i) exemption of research or experimental use and (ii) award grant ing of unused patent
This decision appears t o be of no relevance w it h regard t o t he granting of right s to use an unused patent .
1-4 Comment and other descript ion This decision merit s no furt her comment . 1-5 reference ID number 3
1.1 Thomas Ralph Auchinloss and Antec Internat ional Ltd v Agricult ural & Veterinary Supplies Ltd., Vincent Rooney, Sout h Western Chicks Ltd and Sout h Western Chicks (Warren) Ltd
1.2 [1999] Report s of Patent Cases 397, 29 Oct ober 1998. [1998] EWCA (Civ.) 1642 1-3-1 Summary
The claim ant ’s patent 0260293 set out t he ingredient s of t he composit ion, including in claim 1 "(a) 0.01 t o 5 part s by w eight of water soluble inorganic halide" . As t he defendant s’
biocidal composit ion " Virucidal Ext ra" (“ VE” ) did not contain an inorganic halide, t he
defendant s believed t here could not be infringement. How ever, some of the ingredient s that w ere used at various t imes t o produce VE contained a contaminant (sodium chloride) w hich, t he claim ant s submitted, resulted in the VE infringing.
At t rial, the judge held that VE made w it h a specific ingredient (“ CDB 63” ) did not infringe because t he claim ant s had not established that t he oxidising agent , w hich w as present in t he claimed amount , " in aqueous solut ion, react s w it h t he halide t o generate hypohalite ions" as required by integer (b) of claim 1. The defendant s objected t hat infringement t hrough the use of VE cont aining CDB should not have been considered by the judge because t his w as not a ground of infringement t hat the claimant s had pleaded.
The defendant also used a surfact ant (“ Ufaryl 80” ) w hich contained sodium chloride. In use by t he defendant , t he crystalline form of sodium chloride had disappeared but , according t o t he judge, ions of sodium and chlorine w ere present. In his opinion the dissociated ions of t hese element s were not , w hen added t oget her, an amount by w eight " of water-soluble inorganic halide" , and sodium chloride w as not t he same t hing as a dissociated collect ion of sodium and chloride ions. He also held that , reading t he patent as a w hole, t he skilled man w ould understand t hat w hat was being described and claim ed was t he use of t he dry crystalline form. He t herefore held t hat it had not been established that use of Ufaryl 80 caused infringement of claim 1.
1-3-2 Reason for appeal
The claim ant s, in t heir appeal, submitted t hat in reaching t his conclusion the judge had put a gloss on integer (b) and int roduced t he requirement t hat t he hypohalite ions had t o provide a substant ial biocidal action, t his being a feat ure t hat w as not claim ed. The defendant s disputed t his but also submit ted t hat , even if VE w it h CDB 63 fell w it hin claim 1, t here was no infringement because t he only use that had been established w as experimental use w it hin s.60(5)(b) of t he Patent s Act 1977. The t rial judge rejected t he submission t hat t he
manufact ure of a sample sent t o t he M inist ry of Agricult ure, Fisheries and Food ('M AFF') fell w it hin s.60(5)(b) of the 1977 Act .
1-3-3 Judgment
The Court of Appeal held as follow s:
1. Integer (b) of t he claim required t hat t here be a certain amount by w eight of an oxidising
agent w hich, in aqueous solut ion, react ed w it h t he halide of integer (a) t o generate
hypohalite ions. Providing t hat the required oxidising agent w as present, in an amount w it hin t he specified range, and it was established that it w ould react w it h t he halide of integer (a) t o generate hypohalite ions, t he requirement s of integer (b) w ould be sat isfied. This react ion must be real in t he sense t hat t he skilled addressee of t he patent w ould consider t hat w hat t ook place was a react ion generating hypohalit e ions.
2. There was nothing in t he claim requiring t hat the generated hypohalite ions should be materially or substant ially responsible for the biocidal act ion of t he composit ion. To
int roduce such a requirement , as the judge did, was impermissible and int roduced, by way of const ruct ion, a requirement t hat t he claim must be fair ly based on t he patent specificat ion.
This was a requirement under t he (now -repealed) Patent s Act 1949 but not under the (current ly in force) Patent s Act 1977.
3. Once it w as accepted t hat sodium chloride w it hin the range specified in integer (a) w as present in CDB 63, t he only quest ion remaining w as w het her the oxidising agent reacted in aqueous solut ion w it h t he sodium chloride in order t o generate hypohalite ions. If it did, t here was infringement .
4. The evidence taken as a w hole established that t he react ion claimed in integer (b) t ook place w hen VE was dissolved in water and t he claimant s had t herefore established that VE containing CDB 63 infringed claim 1 in the sense that it fell w it hin the ambit of claim 1.
5. The court w ould not interfere w it h t he judge's reject ion of the defendant s’ submission t hat t he claimant s should not be allow ed t o contend that t he use of CDB63 infringed because it was not pleaded.
6. The t rial judge was correct t o hold t hat t he manufact ure of a sample sent t o M AFF was not a non-infringing use w it hin s.60(5)(b) of t he Patent s Act , as the aim of t hat use was t o obtain official approval, not t o discover somet hing unknow n or to test somet hing as a hypot hesis (applying M onsant o Co v Stauffer Chemical Co, above). If how ever,t he sample sent t o M AFF had been produced during genuine experiment s and been used for such experiment s, such experiment s w ould have been done in relat ion t o t he subject mat ter of t he invent ion since VE was a biocidal composit ion w hich, among ot her t hings, acted t hrough hypochlorit e generat ion.
7. In relat ion t o Ufaryl 80, a person could properly refer t o a solut ion of sodium chloride as containing sodium chloride. However, the skilled reader of the patent w ould conclude t hat t he inorganic halide of integer (a) was intended t o be a solid, not a dissociated collect ion of ions. If asked w het her t he patentee intended t o exclude such a collect ion, he w ould consider w het her the use w ould make a material difference to the way t hat t he invent ion was said t o w ork. On t he evidence in t his case, he w ould not know. Integer (a) of claim 1 should not be interpreted t o include the dissociated collect ion of ions in Ufaryl 80. The trial judge w as right and use of Ufaryl 80 did not bring VE w it hin t he ambit of t he claim .
1-3-4 Analysis of judgment
This is a good example of a dispute concerning a fairly low-technology invent ion, bet w een
t w o relat ively non-sophisticated parties, being resolved by a flight int o t he technical details of the patented technology and t he alleged infringement s. The outcome is unexcept ionable, in t hat—so far as it affect s t he issues of infringement and experiment al use—t he decision is founded on w ell-established principles of patent interpretat ion and upon the precedent of t he earlier decision of t he same court in M onsant o v St auffer (t he House of Lords, w hich is t he ult imat e chamber of appeal in the United Kingdom, is not bound to follow it s earlier decisions but it has ruled t hat t his privi lege is not open t o the Court of Appeal).
1-3-5 Effect and evaluat ion of judgment
The claim ant s’ appeal was allow ed in part and the defendant s’ cross-appeal was reject ed.
1-3-6 Relat ion t o (i) exemption of research or experimental use and (ii) award grant ing of unused patent
The interpretat ion of t he scope of t he Patent s Act 1977, s.60(5)(b) w as neit her broad nor narrow, in t he sense t hat it neit her sought t o bring w it hin t he experiment al use defence any act ivit y t hat was not contemplat ed by the t erminology of that provision, nor did it seek t o exclude from t hat provision any activit y that might have been described as nat urally falling w it hin it . In t he light of t he earlier aut horit y in M onsant o v Stauffer and t he principle t hat an except ion t o a patent right w ill be const rued narrow ly in t he event t hat there is any
ambiguit y in it s meaning, it w as improbable t hat t he defence could have succeeded on t he fact s. The real ground of t he defence was t hat the manufact ure and supply of a sample t o M AFF was not a commercially significant act ivit y t hat resulted in any ident ifiable and
quant ifiable damage to the patent ow ners—but the absence of commercial consequence for t he patent ow ner is not a defence under t he Patent s Act 1977.
In conclusion, t his decision has no bearing on the nature of research and experimental use by a non-patentee, since such act ivit y was not at issue in t his dispute.
1-4 Comment and other descript ion
The trial judge in t his case was a senior barrister w ho w as serving as a Deputy Judge of the Patent s Court—a not infrequent occurrence in patent disputes w here t he level of
technological sophist icat ion is relat ively low. This fact or probably had no impact on t he outcome of t he dispute.
Of more significance is t he fact t hat t he case involved a finely-balanced dispute t hat both w ent to trial and was t he subject of a subsequent appeal. Follow ing t he introduct ion of more mediat ion-friendly Civil Court Procedure Rules in t he early years of t his cent ury, given t he uncertaint y of t he outcome of a trial and t he fact t hat t he market for the patented product w as not so small as t o preclude t w o or more part ies from manufact uring compet ing product s profitably, there w ould have been a substant ial likelihood that t he part ies w ould have sett led on terms t hat required t he payment by the defendant t o t he claim ant of the reasonable royalt y.
1-5 reference ID number 4