Pfizer Limited v Medimpex Jamaica Limited and another, Privy Council, 3 July 2014, [2014] UKPC 20, Lord Neuberger, Lord Sumption, Lord Hughes, Lord Hodge and Sir David Kitchin

The Judicial Committee of the Privy Council (JCPC) dismissed Pfizer’s appeal from the Court of Appeal of Jamaica’s decision that Pfizer’s Jamaican patent for amlopidine besylate (an antihypertensive drug) was invalid. The invalidity claim had been filed by companies selling generic versions of the drug in Jamaica, which Pfizer had claimed infringed its patent. Sir David Kitchin gave the unanimous decision of the JCPC, which depended on two key issues.

One was whether the person who applied for the patent (which he later assigned to Pfizer) was doing so on his own behalf or on behalf of Pfizer (in effect, as an agent). The second related to the fact that Jamaican patent law (the Patents Act 1857) is concerned with local novelty and, therefore, allows “invention by importation” (which Sir David noted “may seem somewhat surprising to those familiar only with the provisions of the European Patent Convention” although it was a feature of UK law until 1978).

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However, although a Jamaican patent can be granted if the invention is known elsewhere, if one or more patents have been granted elsewhere for that invention, the Jamaican patent will expire when the first of those patents expires. The issue was whether or not that provision should be interpreted to apply only where the applicants of the foreign patent and the Jamaican patent were the same person, and the JCPC held that it should. In this case, Pfizer had applied for, and was granted, an Egyptian patent for the same invention but that expired in 1997, which was before the grant of the Jamaican patent. Therefore, whether that expiry meant the Jamaican patent was invalid (and, in fact, was never valid) depended on whether Pfizer was the applicant for the Jamaican patent. The JCPC held that the person who had applied for the patent had done so on behalf of Pfizer and that the actual applicant was Pfizer and, therefore, the Jamaican patent was invalid.

Read the entire decision here.

Head note: Rowena Stent