MONSANTO COMPANY (SALYER'S) APPLICATION

75 [No.4] 15th May, 1969 [1969] R.P.C. IN THE ApPEAL TRIBUNAL Before MR. JUSTICE LLOYD-JACOB Ist and l lth November, 1965 and 2nd February, 1966. MONSANTO COMPANY (SALYER'S) ApPLICATION 5 Patent-Opposition-Patent of addition-Whether exception of section 26(7)(b) applies to publication other than by patentee-Appeal dismissed. Patents Act, 1949, s. 26(7). The owners of a patent and a patent of addition thereto filed an application for a further patent of addition, and this application was opposed on the ground inter alia 10 of prior publication. The opponents relied upon an article in a periodical which was published before the priority date of the first patent of addition and which disclosed the main invention and part of the second patent of addition. The hearing officer held that the opponents could not rely upon the disclosures in the cited document, as it was not right to construe section 26(7), which provides that a patent of addition 15 shall not be refused, revoked or invalidated on the ground only that there is no inventive step having regard to any publication or use of (a) the main invention or (b) the subject-matter of any patent of addition or application therefor, as restricted to such publication or use as was attributable to the patentee. On appeal to the Patents Appeal Tribunal: 20 Held, dismissing the appeal, that it was reasonable to construe the section as covering publication whether by the patentee or third parties, and that the cited document could not therefore be relied upon against the application for a second patent of addition. This was an appeal to the Patents Appeal Tribunal by the opponents, Shell 25 International Research Maatschappij N.V., from a decision of Mr. J. E. Mimms, dated 22nd April, 1965, in which he rejected in part the opponents' allegations of prior publication and obviousness in application No. 879,695 by the Monsanto Company. T·he applicants cross-appealed, contending that the decision could, if necessary, be supported on other grounds. The facts of the case appear from the 30 following decision. 76 Lloyd-Jacob, J. Monsanto Co. (Salyer's) Application [1969] R.P.C. Stephen Gratwick, instructed by Stevens, Langner, Parry & Rollinson, appeared for the applicants. John Whitford, Q.C. and G. D. Everington, instructed by H. I. Downes & Co., appeared for the opponents (appellants). Lloyd-Jacob, J.-The opponents appeal from a decision of Mr. J. E. Mirams (superintending examiner acting for the Comptroller General) dated 22nd April 5 1965, whereby he rejected in part their allegation of prior publication and lack of inventive step in certain of the claims of the letters patent in suit (that being a patent of addition to letters patent No. 796,285 as modified by letters patent No. 879,691) and the applicants cross-appeal in the sense of alleging that the decision could, if it be necessary, properly be supported on other grounds. 10 The point for determination on the appeal depends upon the construction of section 26(7) of the Act which reads: " The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated on the ground only that the invention claimed in the complete specification does not involve any 15 inventive step having regard to any publication or use of: (a) the main invention described in the complete specification relating thereto: (b) any improvement in or modification ofthe main invention described in the complete specification of a patent of addition to the patent for the 20 main invention or of an application for such an addition." The prior publication upon which the opponents relied in their opposition was an article appearing at page 46 of the December 1956 issue of a periodical entitled Modern Plastics. This reads as follows: "Antioxidant for polyolefin resins. Santowhite crystals (a long time standard 25 antioxidant in the rubber trade) is receiving increased impetus as an antioxidant in electrical grade polyethylene. Meanwhile, extraction data are being submitted for clearance by the F.D.A. for its use in general purposes polyethylene. A Monsanto product, Santowhite Crystals is a purifieddialkyl phenol sulphide. All polyolefins are subject to oxidative degradation to a certain degree, but 30 low pressure polyethylene is more vulnerable than the older high pressure types. Hence it is obvious that this antioxidant is going to receive more attention as the low pressure materials grow in importance. Of special significance is that the material appears to be a good antioxidant for polypropylene, which is 35 reported to be more sensitive to oxidation than polyethylene." It will be noted that this citation makes no express reference to letters patent Nos. 796,285, dated 27th October 1954 and 879,691, dated 8th Apri11958, although it is not open to serious doubt that with the exception of the final sentence (wherein reference to polypropylene is made) the disclosure can be taken to be equivalent to that of the applicants' own specifications. 'So far as this final sentence is concerned, 40 it is clear that its impact can be removed from effectiveconsideration by appropriate amendment as outlined by the hearing officer, so that the real issue for present purposes is whether or not the protection afforded by section 26(7) extends to any disclosure of the subject-matter of the main invention and of any addition to it, whoever makes it, or whether it must be restricted to disclosure derived specifically 45 77 [No.4] Patents Appeal Tribunal Lloyd-Jacob, J. from the patentees thereof. There was an additional point at one time argued which was that, if, as in the present case, a disclosure going beyond the main patent disclosure was made, the protection of the section is wholly lost. This was said to follow from the presence of the word "only" in the sub-section. I agree with the 5 hearing officer that the true construction of the sub-section would appear to be against such a meaning, What is implied is that the protection afforded by the sub-section shall not prejudice the effectiveness of any other legitimate ground of objection. The hearing officer took the view that, as the sub-section required him to exclude 10 from consideration "any publication or use", it would not be right to restrict this to such publication or use as was shown to be directly or indirectly attributable to the patentee. That this is a reasonable interpretation of the sub-section is plain enough and, having regard to the limited jurisdiction to which an applicant for patent protection has recourse, a truly final construction of the Patents Act is not made 15 available to him. In all the circumstances, the hearing officer, was in my view amply justified in taking the course he did and I endorse his decision. This means that the appeal must be dismissed, and this renders unnecessary any consideration of the alternative ground for supporting the decision whi (...truncated)