monsanto co. v. stauffer chemical co. and another

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[No. 22] 12 December 1985 [1985] R.P.C.

IN THE COURT OF APPEAL

Before: LORD JUSTICE WATKINSLORD JUSTICE DILLON andSIR DENYS BUCKLEY

13-15 May, 11 June 1985

5 IN THE HIGH COURT OF JUSTICE—PATENTS COURT

Before: MR. JUSTICE FALCONER

4, 5 and 31 July 1984

Monsanto Co. v. STAUFFER CHEMICAL CO. AND ANOTHER

Patent — Infringement — Herbicide — Interlocutory injunction — Injunction10 granted—Defendants' application for variation of order to enable performance of field

trials with alleged infringing herbicide — Field trials proposed to be carried out bothby defendants and third parties — Clearance of herbicide by official bodies — Whetherinfringement— Whether trials had a commercial purpose— Whether trials experimentaluse of in vention—Experimental use under 1949^4 ct—Application refused—Appeal—

15 Variation of interlocutory order to permit certain testing.

Patents Act 1949, section 51(3).

Patents Act 1977, section 60(2), (5) and (6).

Community Patent Convention, Articles 29-32.

R.S.C., Order 104, rule 10.

20 In an action for infringement of a patent relating to a herbicide, the plaintiffs obtainedinterlocutory relief in the usual form against the defendants, S, restraining them fromfurther using or selling their alleged infringing product TOUCHDOWN. After thejudgment and order of the single judge had been confirmed by the Court of Appeal,S sought to vary the order by inter alia the addition of the following proviso:

25 "Nothing in this Order shall prevent the Defendants . . . from doing any of thesaid acts for the purposes of

(i) carrying on field trials by themselves or by others of their TOUCHDOWNherbicide

(ii) performing experiments by themselves or by others for the purposes of this30 Action or Counterclaim"

Prior to the commencement of these proceedings, S had carried out some field trialswith TO UCHDOWN in the United Kingdom and had obtained limited safety clearanceunder the relevant non-statutory scheme (PSPS) for use on stubbles (i. e. post-harvest)

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and in non-crop areas. The further trials which S wished to carry out under the proposedproviso to the order were said in evidence to be directed mainly to obtaining furtherPSPS clearances, including clearances for the use of TO UCHDOWN pre-harvest. Theproposed trials were to be of three kinds:

(i) those to be carried out by S's personnel at its farm, 5

(ii) those to be carried out by S's personnel on other farms, and

(iii) certain trials to be carried out by third parties such as ADAS and the ForestryCommission.

S submitted that the proposed field trials were experiments and, on the assumptionthat TOUCHDOWN infringed the patent in suit nevertheless they were entitled to carry 10out those trials having regard to section 60(5)(b) of the Act. The plaintiffs opposedvariation of the order contending that S's proposed trials were not experiments but hada clear commercial purpose, that was to obtain further PSPS clearances, approvalsunder the other non-statutory scheme (ADAS) and to establish product efficacy andsafety with certain potential users. 15

Held, by Falconer J., dismissing the application,

(1) that the proposed trials were directed to obtaining necessary clearances,approvals and acceptances so as to extend the potential market for TOUCHDOWNand not to satisfy itself that it could manufacture TOUCHDOWN commercially.

(2) In section 60(5)(6) of the Act, the phrase "experimental purposes relating to the 20subject matter of the invention" limited the paragraph to experiments directed to thepatented invention as such. It excluded tests or trials having as their purpose theachievement or extension of the acceptance of a commercial embodiment of the inven-tion. All three categories of proposed trials would accordingly be acts of infringementnot excluded by the section. 25

(3) Further, having regard to the cumulative effect of the provisions of subsections(2) and (6) of section 60 of the Act, even if S were right in their contention as to theconstruction of section 60(5)(b), they could not supply TOUCHDOWN to thirdpartiessuch as ADAS and farmers to carry out such trials.

(4) The interaction of subsections (2) and (6) of section 60 of the Act suggests that 30acts for experimental purposes falling within subparagraph (b) of section 60(5) areconfined to acts which could be carried out privately without involving other personsto whom the means to carry out the acts would be supplied.

(5) It was reasonable to assume that in using the terms "experimentalpurposes" insection 60(5)(fe) of the Act, Parliament was intending to use "experimental" in the sense 35in which "experiment" and "experimental" had been understood in patent jurispru-dence prior to the enactment of the 1977 Act.

(6) On the authorities decided under earlier acts in relation both to infringement andto prior user, an experiment in this context was

(i) something done on a small scale having regard to the nature of the subject- 40matter of the invention, and

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[No. 22] Patents Court

(ii) it was done for the purpose of finding out something about the invention ratherthan of proving or demonstrating commercial efficacy of a product to thosewho may be concerned with commercial use of the product.

Frearson v. Loe (1878) 9 Ch.D. 48, and Monsanto Co. v. Stauffer Chemical Co.5 [1984] F.S.R. 559 (N.Z.), applied. Micro Chemicals Ltd. v. S.K.F. Inter-American

Ltd. (1971) 25 D.L.R. (1st Ser.) 79, distinguished.

(7) There was no good reason for varying the injunction by adding the proposedproviso (ii). In relation to experiments for the purposes of the action and counterclaim,the court would ensure that neither side was disadvantaged.

10 The defendants appealed.

Held,

(1) Since section 60 of the Patents Act 1977 was enacted to bring U.K. patent lawinto line with the corresponding provisions of the European Patent Convention, earlierdecisions relating to "reasonable trial" were not useful in properly construing the phrase

15 "for experimental purposes" in section 60(5)(6) of the Act (p. 537).

(2) The word "experiment" was an ordinary English word and had never been aterm of art in UK patent law. Further, the wording of section 60(5)(6) (in contrast tothat of section 60(5)(a)) indicated that the experimental purposes there contemplatedmight yet have a commercial end in view (p. 538).

20 Micro-Chemicals Ltd. v. Smith Kline and French Inter-American Ltd. (1971) 25D.L.R. 79, considered.

(3) Trials carried out in order to discover something unknown or to test a hypothesisor even in order to find out whether something which is known to work in specificconditions, e.g. of soil or weather, will work in different conditions could fairly be

~c regarded as experiments. But trials carried out in order to demonstrate to a third partythat a product works or, in order to amass information to satisfy a third party, whethera customer or a body such as the PSPS or AC AS, that the product works as its makerclaims were not to be regarded as acts done "for experimental purposes" (p. 542).

(4) The interlocutory injunction would be modified only to provide that it shouldnot extend to acts done for experimental purposes relating to the subject-matter of the

30 invention in laboratories or glasshouses in the United Kingdom or in the defendant'sfarm in Essex (p. 543).

(5) (Obiter) There was force in the argument that the effect of section 60(6) wasto leave it an infringement under subsection (2) which was not saved by subsection (5),for the defendants to supply TO UCHDOWN to the Forestry Commission or the Water

35 Authorities for the latter to use for their own benefit (p. 542).

Further the facts relating to this litigation are set out in the reports of the judgmentof the Court of Appeal [1984] F.S.R. 574 and of the High Court of New Zealand[1984] F.S.R. 559.

The following further authorities were referred to in the judgment of Whitford J.:

40 Cave-Brown-Cave's Application [1958] R.P.C. 429.Elias v. Grovesend Tin Plate Co. (1890) 7 R.P.C. 445.

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Falconer J. Monsanto Co. v. Stauffer Chemical Co. [1985] R.P.C.

Fellowes v. Brookes (1910) 27 R.P.C. 89.Hoe & Co. v. Foster & Sons (1899) 16 R.P.C. 33.Hudson, Scott & Sons Ltd. v. Barringer Ltd. (1906) 23 R.P.C. 79.International Paint Co. Ltd.'s Application [1982] R.P.C. 247./ . Lucas (Batteries) Ltd. v. Gaedor Ltd. [1978] R.P.C. 297. 5Molins v. Industrial Machine Co. Ltd. (1937) 54 R.P.C. 94.Muntz v. Foster (1844) 2 W.P.C. 96.Perard Engineering Ltd.'s Application [1976] R.P.C. 363.

The following authorities were cited in argument before the Court of Appeal:

Cave-Brown-Cave's Application [1958] R.P.C. 429. 1 0

Frearson v. Loe (1878) 9 Ch.D. 48.International Paint Co. Ltd's Application [1982] R.P.C. 247.Lewis v. Cox [1984] 3 All E.R. 672./ . Lucas (Batteries) Ltd. v. Gaedor Ltd. [1978] R.P.C. 297.Micro Chemicals Ltd. v. Smith, Kline & French Inter-American Corp. (1971) 25 i<r

D.L.R. 79.Monsanto Co. v. Stauffer Chemical Co. [1984] F.S.R. 559 (N.Z.).Perard Engineering Ltd. (Hubbard's) Application [1976] R.P.C. 363.Pfizer Corp v. Ministry of Health [1965] R.P.C. 261.Stauffer Chemical Co. 's Application [1977] R.P.C. 33. _ft

United Telephone Co. v. Sharpies (1885) 29 Ch.D. 164. ZU

Stephen Gratwick, Q.C. and Michael Fysh, instructed by Bristows, Cooke &Carpmael appeared for the plaintiffs (respondents). Anthony Evans, Q.C, A. KynricLewis, Q. C. and Christopher Floyd, instructed by McKenna & Co. appeared for thedefendants (applicants).

Falconer J.—In this patent action, in which the plaintiffs sue the defendants for 25alleged infringement of their patent No. 1,366,379 for glyphosate herbicides by theimportation, use and marketing by the defendants of their herbicide TOUCHDOWN,on 10 February 1984, upon the application of the plaintiffs by Motion, I granted untiljudgment or further order an interlocutory injunction restraining the defendantsfrom: "doing whether by their directors, officers, servants or agents or any of them ^0or otherwise howsoever the following acts or any of them, that is to say supplyingor offering to supply, making, disposing of, offering to dispose of, using, importingor keeping, whether for disposal or otherwise, herbicidal compositions identified bythe code name SC0224 or any other herbicidal compositions based on glyphosate".(The defendants' herbicide now known by the trade name TOUCHDOWN is that 3 5

previously identified by the code name SC.0224). An appeal by the defendants wasdismissed and my Order affirmed by the Court of Appeal.

I have now before me a motion by the defendants whereby they seek to have theinjunction varied. Their notice of motion asks for an order:

"(1) that upon the second defendants' undertaking: 40

(i) that they will keep true and accurate records (showing at least the detailsset forth in the Schedule hereto) of all the TOUCHDOWN herbicidewhich they hold in their possession or control at the date hereof or which,in accordance with the following provisions of this Order, is imported bythem subsequent hereto 45

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[No. 22] Patents Court Falconer J.

(ii) that they will permit the plaintiffs by their solicitors or other independentexperts to inspect such records at all reasonable times upon reasonablenotice.

The injunction contained in the Order of the Honourable Mr. Justice Falconer5 dated 10 February 1984 be varied by the addition of the following proviso, that

is to say:

'Nothing in this Order shall prevent the defendants or either of them, whetheracting by themselves, their directors, officers, servants, agents or otherwisehowsoever from doing any of the said acts for the purposes of:

10 (i) carrying on field trials by themselves or by others of their TOUCHDOWNherbicide.

(ii) performing experiments by themselves or by others for the purposes ofthis Action and Counterclaim."

They also ask for such further or other relief as may be just and that the costs of15 the motion should be taken care of.

As to the plaintiffs' patent, the nature of the patented invention and the factsleading up to the grant of the interlocutory injunction, these are dealt with in myjudgment on the motion and in the judgment of the Court of Appeal;* it is notnecessary to recapitulate them here. However, to explain the field trials which the

20 defendants now wish to carry out or have carried out I should refer briefly to the workalready done in developing their herbicide TOUCHDOWN.

The invention of TOUCHDOWN in March 1977 was followed, as Mr. Meyding,the defendants' project director of TOUCHDOWN responsible for its introductionworldwide, testified in his first affidavit in the previous motion, by "a vast amount

25 of work . . . both in the United States and more recently in the United Kingdom todevelop the product, to prepare for commercialisation and finally to put it on themarket in the U.K. in August of 1983". The extent of that work is detailed by himin paragraphs 10 and 11 of that affidavit, the defendants, whom I will refer tocollectively as "Stauffer" were in a position to apply in December 1980 for a patent

30 in the United States for their herbicide and that application has proceeded to grant.Other patent applications have been filed "worldwide" including in September 1981a European Patent application. Field trials were conducted in the United States andin the United Kingdom in 1982 and 1983 and in March 1983 commercial productioncommenced in the United States with the first commercial launch of the Stauffer

35 product in the United Kingdom in August 1983. In the United Kingdom for materialssuch as, inter alia, herbicides there are two regulatory bodies, the Pesticides SafetyPrecaution Scheme ("PSPS") dealing with safety of such materials, and the Agricul-tural Chemicals Advisory Scheme ("ACAS") concerned with the efficacy of suchchemicals. Although PSPS and ACAS are not statutory regulatory bodies, but are

40 voluntary schemes, it is, I think, common ground that as a practical matter clearanceby PSPS and approval by ACAS is necessary for any successful marketing of anagricultural chemical such as a herbicide. The Stauffer launch in the U.K. of TOUCH-DOWN commercially in August 1983 was on the basis of a limited clearance for post-harvest and certain other non-crop use only but with a limited clearance for certain

* [1984] F.S.R. 574 (Court of Appeal judgment only).

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pre-harvest use trials. As to that commerical launch, Mr. Purdy, the general managerof the second defendant ("Stauffer U.K.") testified in his affidavit of 1 December1983 on the first motion that Stauffer U.K.'s sales of TOUCHDOWN in 1983 wereexpected "to be somewhere in the region of £390,000".

The further trials which Stauffer wish to carry out and are envisaged under the 5wording of the proposed proviso (i) to the injunction are directed mainly to obtainingclearance for pre-harvest use, but some trials are also planned for grassland clearing,aquatic weed control and certain forestry uses—see Mr. Purnell's affidavit of 13 June1983, paragraph 3. Although Mr. Evans for the defendants stated at an early stageof his address that what is proposed by Stauffer is essentially trials carried out by third 10parties for Stauffer and Stauffer's purposes with Stauffer supplying the TOUCH-DOWN material to the third parties free of charge, he later sub-divided the proposedtrials into three kinds as follows:

(1) Those to be carried out by Stauffer personnel on Stauffer's own farm withPSPS and ACAS supervision; 15

(2) Stauffer personnel carrying out trials on other farms, perhaps with PSPSand ACAS involvement, Stauffer, as I understand it, in effect renting a smallpiece of land, say 2 acres, from each of a number of farmers in different areas;

(3) Some trials to be carried out by third parties such as ADAS, (The Agricul-tural Development Advisory Service, a section of the Ministry of Agriculture), 20the Forestry Commission, certain Water Authorities and others.

The defendants' main submission turns on a question of construction of one of theprovisions of the Patents Act, 1977. The defendants submit that the proposed fieldtrials are experiments and, on the assumption that their product TOUCHDOWNinfringes the plaintiffs' patent, nevertheless they are entitled to carry out those trials 25having regard to section 60(5)(b) of the Act which permits experiments.

The plaintiffs oppose any variation of the injunction as sought and, so far asconcerns the proposed field trials to which proviso (i) is directed, put shortly, whatthey submit is that no such field trials should be allowed to take place until thedefendants are free to market their product; they submit that, while the defendants 30may conduct experiments which fall within the statutory provision in question, theproposed field trials are not experiments at all, but are trials with a commercialpurpose, to obtain the approval of PSPS and ACAS to establish commercial efficacyand safety, which approval, it is common ground, is obligatory for anyone seekingto market an agricultural herbicide, and also, in the case of the third of Mr. Evans' 35categories, to introduce and establish the efficacy and safety of the product withcertain potential commercial users such as the Forestry Commission and WaterAuthorities.

Mr. Evans specifically stated that Stauffer "do not dispute for a moment that thetrials will have a commercial aspect" but contended that that fact would not take the 40trials outside the provisions of section 60(5)(b) of the Act. That, it seems to me,understates the plain purpose of the proposed field trials. It is abundantly clear fromMr. Purnell's affidavit of 13 June 1983, in particular paragraphs 8, 9 and 10, that theproposed field trials are directed to obtaining the necessary clearances, approvals andacceptances to enable Stauffer to widen the commercial market for their TOUCH- 45DOWN product, already commercially launched in 1983 for post-harvest use, to

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include pre-harvest use in crops, grassland clearance, aquatic weed-control andforestry use.

Before coming to section 60(5)(6) and other relevant provisions of the Patents Act1977,1 should mention at this point that Mr. Evans submitted an alternative possible

5 basis for variation of the injunction on a consideration, or strictly speaking, a re-consideration of the balance of convenience upon which the injunction was granted.But I leave that at this stage until I have considered, which I now proceed to do, thequestion of the construction of section 60(5)(6).

Section 60 deals with what acts constitute infringement of a patent and specifically10 provides that certain acts will not constitute infringements.

Subsection (1), which I need not read, sets out the acts which are generally referredto as "direct infringements".

Subsection (2), which deals with what are often referred to as indirect infringe-ments, I should read because Mr. Gratwick made an important submission based on

15 it.

"(2) Subject to the following provisions of this section, a person (other thanthe proprietor of the patent) also infringes a patent for an invention if, whilethe patent is in force and without the consent of the proprietor, he supplies oroffers to supply in the United Kingdom a person other than a licensee or other

20 person entitled to work the invention with any of the means, relating to an essentialelement of the invention, for putting the invention into effect when he knows,or it is obvious to a reasonable person in the circumstances, that those meansare suitable for putting, and are intended to put, the invention into effect in theUnited Kingdom." {Emphasis added.)

25 Subsection (5) provides:

"(5) An act which, apart from this subsection, would constitute an infringe-ment of a patent for an invention shall not do so if:

(a) it is done privately and for purposes which are not commercial;

(b) it is done for experimental purposes relating to the subject-matter of the30 invention;"

I need not read paragraphs (c), (d) and (e) which are not material for present purposes.

Subsection (6) is as follows:

"(6) For the purposes of subsection (2) above a person who does an act inrelation to an invention which is prevented only by virtue of paragraph (a), (b)

35 or (c) of subsection (5) above from constituting an infringement of a patent forthe invention shall not be treated as a person entitled to work the invention,but. . . ."

I need not read the rest of that subsection as it is not material for present purposes.

In view of the provisions of section 130(7) of the Act I have to bear in mind that40 the provisions of section 60 have corresponding provisions, namely Articles 29-32

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in the Community Patent Convention ("CPC")—in particular the language of subsec-tion (5) closely follows that of Article 31:

"The rights conferred by a Community patent shall not extend to: (a) acts doneprivately and for non-commercial purposes; (b) acts done for experimentalpurposes relating to the subject matter of the patented invention;" 5

Paragraphs (c), (d) and (e) are not material but are similar to paragraphs (c), (d)and (e) of section 60(5).

As the CPC has not, so far, been brought into force, no decisions have been madeas to the construction of those corresponding, or indeed, any, provisions of it. Article31 does not explain what is meant by "experimental" in paragraph (b) thereof nor, 10indeed, so far as I am aware, is there any explanation of "experimental" to be foundanywhere else in the Convention.

In construing paragraph (b) of section 60(5) it is, of course, to be noted at oncethat the wording of the paragraph is not "it is done for experimental purposes". The"experimental purposes" which render non-infringing an act otherwise an infringing 15act are limited to those "relating to the subject-matter of the invention". As a matterof language that limitation seems to me to restrict the paragraph to experimentsdirected to the patented invention as such, experiments such as testing whether apatented product can be made, or a patented article made to work, as described inthe patent specification, or experiments to see whether the patented invention can 20be improved or testing the effect of a modification in some particular to see whetherit is an improvement or not. But the limitation would, it seems to me, as a matterof language, exclude from the exemption of the paragraph use of a patented articleor process in experiments to test or evaluate some other product or process—thepurpose of any such experiments would not relate to the subject-matter of the patented 25invention.

Again, it seems to me that the limitation would exclude tests or trials having astheir purpose achieving or extending the commercial acceptance of some commercialembodiment of the patented invention—such tests or trials would not, it seems tome, as a matter of language, be for purposes related to the subject matter of the 30patented invention. I am fortified in that view in that I feel it cannot have beenthe intention of the legislature to include in the exemptions from infringements ofparagraph (b) of section 60(5) tests or trials intended, as their purpose, to promotethe commercial prospects and acceptability of a product, ex hypothesi an infringingproduct, with a view to its wider or better marketing by the infringer when he should 35be free to market it, as, for instance, when the patent expires.

On the construction of paragraph (b) of section 60(5) Mr. Evans pointed to thelanguage of paragraph (a) which exempts an act "done privately and for purposeswhich are not commercial" (emphasis added) and submitted that as there was no suchlimitation to non-commercial purposes in paragraph (b) as is found in paragraph (a), 40it would not be right to limit "experimental purposes" in paragraph (b) to "non-commercial purposes". That submission, it seems to me, overlooks the limitationwhich is to be found in paragraph (b) limiting experimental purposes to those relatingto the subject matter of the invention, a limitation which, as a matter of language,I take to have the effect I have indicated. The submission also overlooks this, that 45the terms "experiment" and "experimental" have been used in United Kingdom

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patent jurisprudence for very many years and in the absence of any indication in thestatute to the contrary I agree with Mr. Gratwick's submission that it is a sensibleassumption that Parliament in using "experimental" in paragraph (b) was using it inthe sense that it has hitherto been used in our patent jurisprudence. Indeed it is

5 reasonable to infer that Parliament, which was enacting, in section 60, a statutorycode for patent infringement for the first time in our patent legislation, in the provisionof paragraph (b) of section 60(5) was intending to continue in statutory form the priorUnited Kingdom law as to experimental use of a patented invention. It is to be notedthat this is a view supported by textbook writers: Walton & Laddie's Patent Law of

10 the United Kingdom at pages H/271 and 11/1088 and Terrell (13th Edition) at paragraph6.93. I bear in mind that paragraph (b) of section 60(5) is in similar language toparagraph (b) of Article 31 of the CPC, but so far as I am aware, there is no reasonto think that paragraph (b) was not included in Article 31 for the same or a similarreason.

15 Mr. Evans, in support of his submission that it would not be right to limit "exper-imental purposes" as if limited to "non-commercial purposes", argued that a greatdeal of significant experimental work must be carried out by commercial concernswith a view to ultimate commercial development. Of course, that must be so. Butthat does not mean that commercial concerns are free to experiment, test or carry

20 out trials on a product which infringes another's patent with a view to commercialexploitation of that infringing product. I take the express limitation in paragraph (b),which cannot be ignored, to be designed to prevent any such activity. I would furtherpoint out that under the United Kingdom law prior to the coming into force of theAct of 1977, as I understand it, the extent to which experimental user of a patented

25 invention was exempted from constituting an infringement of the patent was verycircumscribed (I shall come to that law later) and certainly would not have extendedto exempt from infringement the sort of field trials now proposed by Stauffer.

Before coming to the prior law, however, I should deal here with a submissionmade by Mr. Gratwick on the provisions of subsections (2) and (6) of section 60. He

30 submitted that having regard to the provisions of section 60(6), a person who is nota licensee under the patent and who carries out an act falling within paragraph (b)in section 60(5), e.g. an experiment under that paragraph, is not a person entitledto work the invention for the purposes of section 60(2). Therefore, even if, as Stauffercontend, field trials such as Stauffer propose in their field trials are experiments falling

35 within paragraph (b), nevertheless Stauffer would be infringing by supplying theirTOUCHDOWN material to any other person to carry out any such trial on behalfof or at the request of Stauffer (of course, on the assumption for this purpose thatTOUCHDOWN infringes the plaintiffs' patent). It seems to me that that submissionis right—and, indeed, I did not understand it seriously to be disputed by Mr. Evans.

40 It follows that, even if Stauffer should be right in their contention as to the constructionof sub-paragraph (b) of section 60(5), nevertheless they could not supply their materialto organisations such as ADAS, The Weed Research Organisation (WRO), theForestry Commission, Water Authorities, the Processors and Growers ResearchOrganisation (PGRO) to carry out such trials, as is proposed they would do by Mr.

45 Purnell in paragraph 4 of his affidavit of 13 June 1984. Any such supply by Staufferwould infringe under section 60(2). Equally, no farmer could be supplied withTOUCHDOWN to carry out such trials for Stauffer on his own farm, or indeed, anyexperiment genuinely falling within paragraph (b). However I understood from Mr.Evans that it was not proposed that any individual farmer should be asked to do so—

50 it was proposed that trials on individual farms should be carried out by Staufferpersonnel.

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But, additionally, that inter-action of the provisions of section 60(6) and section60(2) does, as Mr. Gratwick also submitted, throw some light on the ambit of whatis an act "done for experimental purposes relating to the subject matter of theinvention" under paragraph (b)of section 60(5)—it suggests that acts for experimentalpurposes falling within sub-paragraph (b) are confined to acts which can be carried 5out privately without involving other persons to whom the means to carry out theacts would be supplied. This point appears more forcefully from the language of thecorresponding provisions of the CPC Article 30(1) corresponds to section 60(2) ofthe Act but instead of the wording, "a person other than a licensee or other personentitled to work the invention" has the wording "other than a party entitled to exploit 10the patented invention". Article 30(3) which corresponds to that part of section 60(6)which I have quoted above is as follows:

"Persons performing the acts referred to in Article 31 sub-paragraphs (a) to(c) shall not be considered to be parties entitled to exploit the invention withinthe meaning of paragraph 1." 15

That language seems to me to make very plain that acts falling within sub-paragraph(b) of Article 31 (i.e. "acts done for experimental purposes relating to the subject-matter of the patented invention") do not include acts which have as their purposethe exploitation, which can only mean commercial exploitation, of what would, butfor the exemption of paragraph (b), be an infringing article or process as the case 20may be.

As I think it is reasonable to assume that in using the term "experimental purposes"in sub-paragraph (b) of section 60(5), Parliament was intending to use "experimental"in the sense in which "experiment" and "experimental" had been understood in ourpatent jurisprudence for many years prior to the enactment of the Patents Act of 1977 25and was not intending to use the term in any new and different sense, I must nowturn to the authorities from which the meaning of "experiment" and "experimental"as understood in our patent jurisprudence is to be gleaned and consider how whatStauffer propose to do by way of their field trials stands in the light of those authorities.I should say at once that Mr. Evans relied strongly on a decision of the Canadian 30Supreme Court, Micro Chemicals Ltd. v. Smith, Kline & French Inter-American Ltd.,(1971) 25 D.L.R. (1st Ser.) 79. I will come to that case later, but I consider first theEnglish authorities.

I should, perhaps, mention at this point that Mr. Evans submitted towards the closeof his opening that the burden of proof in the present matter lay on the plaintiffs as, 35so he put it, the plaintiffs were seeking to justify the form of the injunction towhich they were not entitled if the proposed trials fell within the acts excepted frominfringement under paragraph (b) of section 60(5). Mr. Gratwick did not shrink fromassuming that burden. He first considered the wording of the present statutoryprovisions (section 60(5) and section 60(2) and (6)) and I have already dealt with his 40submissions in that regard. Coming to the decided cases, he referred me to three linesof authority.

His first line of authority consisted of three decisions on "reasonable trial" withinthe meaning of that term in section 51(3) of the Patents Act 1949, the cases citedbeing Perard Engineering Ltd. 's Application [1976] R.P.C. 363, Cave-Brown-Cave's 45Application [1958] R.P.C. 429 and International Paint Co. Ltd. 's Application [1982]R.P.C. 247. However, I do not propose to refer to those cases further as I did notfind them of as much assistance for present purposes as his second and third lines

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of authority concerned with "experiment" in two contexts, respectively prior use andinfringement. I take the prior use cases first, as did Mr. Gratwick.

In Elias v. Grovesend Tin Plate Co. (1890) 7 R.P.C. 455 the plaintiff had manufac-tured and used his patented machine commercially without secrecy before he applied

5 for his patent and a question arose as to whether that use was an experiment whichdid not invalidate the patent. Such use was held not to be experimental but commercialand a publication invalidating the patent.

Lord Esher, M.R., at page 466, in a passage from line 21 to line 43, said this:

"Now we come to the third point, which the learned judge felt himself forced10 to determine, which is this: Supposing that it was an invention, supposing that

it was all Elias's—supposing both those things in his favour, yet, his inventionhad become public property before he took out his patent. The patent law aboutthat is, that so long as you are experimenting upon the thing in the hands ofpeople who ought not to disclose it—you must have people to assist you, and

15 you cannot do everything yourself in your own private room—but so long as youare only doing it with people who are to assist you, and who ought not to tell,that is experimenting, and it is no publication; it does not make it public property.But if you go on with all that you have been in doubt about, to erect or makeyour patent—if it is a machine, to make your machine—if all that is over, and

20 you put it up in a public workshop or in a place where other people would comewho are not bound by any rule of secrecy or faith—who are not bound to keepthe secret—if you put it up in a place which they are to frequent and where theycan see it, you have published it, and if you have published it, it becomes publicproperty—it becomes the property of all the world immediately. If you put it

25 up in a public workshop—not to go on experimenting about it in the sense inwhich I have said, to see whether your machine is complete or not—but to useit as the completed thing, as here, (for that is the way in which it was put up)in his factory as part of his plant, and in respect of the user of which it is obvious,if it turned out a failure, he would have to pay for the plates—then it is a

30 commercial user as well. If that is done it is no longer experimental; it is apublication."

Hoe & Co. v. Foster & Sons (1899) 16 R.P.C. 33 was a patent action in which thepatent in suit was for an invention relating to printing machines. The defendantsalleged the patent was invalid by reason of prior use of the patented machines in this

35 country in circumstances explained by Lord Lindley, M.R. at page 37, line 42:

"The facts are simply these. The invention was known in America, and it wasimported here and the invention was known, before the date of the Englishpatent, to be a perfectly successful invention. No experiment was required toascertain that, and accordingly on the 26th of June 1885, that is five months

40 before the date of the patent, or thereabouts, the patentees agreed to supplyand set up two of these printing machines, with this ingenious folding mechanism,in Liverpool, for the purposes of the 'Liverpool Mercury'. They were to be setup upon the terms that the purchasers should pay £6,800 on completion of thework; 'in our usual way', which means without explanation that the patentees

45 are to send their people to superintend the erection of these things, and not tohand them over until they are found to be in good order. These printing machinesare very complicated machines; they require a good deal of care and skill, notonly in their original construction, but in their being fitted together and put

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into working shape, and I do not doubt it is perfectly true that nobody wouldundertake to set up a machine and run it to the satisfaction of either the selleror the purchaser without some trial of the machine in connection with thebusiness. The machines were put up by the patentees, and under their superin-tendence, by two persons," and they are named. "There was what they called 5'a run'. They were set to work in this way—the sheets of the 'Liverpool Mercury'were put into them and printed. The first run was on the 19th to the 21stof November. That was not very successful, that is to say little defects wereascertained which required to be put right. The machine was run again for thepurpose of printing this newspaper from the 26th to the 28th of November. 10Again, at the early part of that run, there were some defects ascertained andthey were put right. The last part of the run was all that could be desired, andat the end of that second run the machine was ascertained to be in good workingorder. There was a third run on the 3rd to the 5th of December, in which nodefects were discovered, and the machine was then used for the purpose of 15printing the 'Liverpool Mercury' as a pure matter of business. That, to my mind,is absolutely fatal to the validity of this patent."

Going down, on page 38, to line 30, in a short passage, still in the judgment ofthe Master of the Rolls, he said:

"To sum that up, it means that the trial even of the machine—for there was 20no trial of the invention, as nobody wanted that—it was known to be a perfectlygood invention—the trial of the machine to see that it was put up right was overand completed by the end of the second run on the 28th of November. Whatdoes that mean? Here was the machine being used in this country, not by wayof experiment in any sense but for the purpose of the business, to accomplish 25which it was erected—for the purpose of printing this 'Liverpool Mercury.'Itwas so used for that purpose before the date of the patent.^

Mr. Gratwick submitted, in my view rightly, that that was a case in which theinvention was known to work—the machines were being tried out to see if they cameup to contract for purchase, i.e. "not by way of experiment in any sense but for the 30purposes of the business"—to quote the Master of the Rolls—and that the situationin that case would not have fallen within the wording of paragraph (b) of section 60(5)as being "for experimental purposes relating to the subject matter of the invention".

In Hudson, Scott & Sons Ltd. v. Barringer Ltd. (1906) 23 R.P.C. 79 a questionarose as to whether certain activities of the plaintiff patentee with a view to commercial 35marketing of his patented products amounted to prior use invalidating his patent.A passage from the judgment of Kekewich J. is useful in distinguishing betweenexperiments to test the invention and activities directed to the commercial marketingof the patented product. On page 87, starting at line 33, the learned judge said:

"That being so there is very little else to be said" 40

—he is referring to what he has just decided—

"but there is one point of importance, which has been very thoroughly argued,and, I think, I ought to deal with it, and that is what has been called publicationor prior user. No doubt Mr. Thompson gave us a very clear account of whatwas being done. The patentee foresaw, and foresaw with great accuracy, the 45possibility of making a market for articles which up to that time had not beenproduced, because the particular material from which they were to be produced

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had not been in general use, and he made experiments, and with Mr. Thompson'sassistance he seems to have made a great many experiments. So far, of course,that was perfectly right—a man is entitled to make experiments; in fact, he isbound to do so. No man can draw up a specification, which will have the slightest

5 chance of holding water, without testing the results which he is going to statein that specification, and he is entitled to make experiments; and so far as Mr.Thompson's experiments are concerned I see no reason for doubting that secrecywas observed, and that he and his employes kept the results of those exper-

. iments—that is to say, the particular plates which they printed—to themselves.10 So far there was no publication. A man is entitled to do that; he is entitled to

do more than that; he is entitled to ask his friends confidentially to advise him,taking care that they are not so many that they may be regarded as a portionof the public. He is entitled to have the assistance of experts to tell him whatthings can be done and what things cannot be done. But he is not entitled, as

15 I understand the law, in the slightest degree to put those things on the market.Of course he is not entitled to publish them and exhibit them to the public; Iam not dealing with that case. But he is not entitled to put them on the market;he is not entitled to go to persons who are likely to be customers and say: 'IfI bring this out, will you order so many? Here is a sample, perhaps not complete—

20 more or less in the rough—but with regard to which you, who know these things,can tell exactly what will be forthcoming. Will you order 5,000 or 10,000? Willyou have the monopoly of sale in certain towns? If you will, then I will patentthis and bring it out.' He is not entitled to insure himself against failure, andstill more to ensure success, by obtaining orders in advance, and then, having

25 done that, to patent and obtain protection for what he has really used in thatway. Mr. Moulton, in reply, attempted a most subtle and ingenious distinctionbetween what was done here and what he knew could not be done. He said thatall that the patentee did here was to make a promise of a subsequent user, becausehe promised to deliver after the date of the patent. He said that is not prior user;

30 but I have before me distinct evidence of orders given and secured before thedate of the patent, orders which, if they were not fulfilled would be a foundationfor an action—that is to say, if the patentee had been ready to deliver and hiscustomer had not been ready to accept, there would have been ground for anaction for non-fulfilment of contract. That, to my mind is distinct user; it is not

35 the promise of a subsequent user. That is the way in which an article of this kindis used, by selling it to customers, by obtaining orders; and although we havenot got the whole story, there is quite enough before me to show—I think it isproved; at any rate, it ought to be inferred—that travellers were entrusted withspecimens, which would be, though rough and though incomplete, perfectly

40 understood by the customers, to hand round and show, and from those to obtainorders, with a view to insuring a large sale whenever the proper time came andthe patentee had patented the invention. As I understand the law, that is notallowed. That is user. The patentee is not protected if he takes the risk of puttingon the market what, after all, may be far from a success. He is not entitled to

45 secure success in that way, and then patent what he has already used. On thatground also I am against the plaintiffs."

Fellowes v. Brookes (1910) 27 R.P.C. 89, a decision of Warrington J. as he thenwas, was a patent action in which the validity of both patents in suit was attacked,on the ground of prior user. In his judgment dealing with the prior use alleged against

50 the second patent Warrington J. differentiated the prior use as experimenting andnot a use in any commercial sense: page 102, line 42 to page 103, line 16.

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A modern prior use case cited by Mr. Gratwick was that of J. Lucas (Batteries)Ltd. v. Gaedor Ltd. [1978] R.P.C. 297. The defendants had attacked the validity ofone of the patents in suit on the ground of secret prior use under paragraph (b) ofsection 32(1) of the Patents Act 1949. But section 32(2) provides that for the purposesof section 32(1) (b) no account shall be taken of any secret use for the purpose of 5reasonable trial or experiment only. Whitford J. said (at page 385, line 1.30):

"The object of the provision appears to me to be directed to safeguarding afirm who are in truth in commercial production. Trials or experiments madeduring the early stages of production could sensibly be said to be made for 10purposes other than reasonable trial or experiment only."

Whitford J. was, therefore, holding that the stage of use of the invention "for thepurpose of reasonable trial or experiment only" had been passed when the earlystages of production had been reached. 15

Coming now to the infringement cases dealing with experiments and experimentaluse I was referred first to Muntz v. Foster (1844) 2 W.P.C. 96, a patent action triedbefore Tindall C. J., sitting with a jury. The patent was for an improved manufactureof metal plates for sheathing ship bottoms. It appears to have been the defendants' 20case on infringement that the infringing material had been made by way of experimenttrying out an old patent. In his summing-up, Tindall C.J., dealt with this aspect ofthe case as follows. He had just gone through summing up the evidence to the juryand he said this:

25"That is the evidence on one side to shew the patent has been infringed; on

the other side you have had called before you the witness Moyle, who statedto you, that without any persons at all informing or instructing him as to the modein which the plaintiff prepared the sheathing, the subject of the patent, he gavedirections to work from Collin's patent, which was taken out in the year 1800, 30and states, so far from its being an invasion of the patent, it was doing no morethan he had a right to do for his employers, namely, taking an old specificationlong before the grant of this patent, which would make the discovery one knownto the world, and that he followed that up for the purpose of making the material,which was afterwards sent to Liverpool, and then purchased by the agent on the 35part of the plaintiff.

"The observations that have been made to you of that point are, first, thatit would appear from the evidence that was given to you today, that a veryconsiderable quantity of the metal that was made at the defendant's works, was 40in fact made of the same materials and the same proportions as pointeed outin the specification, namely, of the purest copper and of the purest zinc: and verynearly in the proportions that have been put before you in the evidence. It isanswered to that, although such work was completed and carried on from themonth of February to the month of April 1843, yet that in fact it never was 45intended for sale or for any use at all; but that the work was stopped, that themanufacture was suspended, and that there it remains now in the workshop orwarehouse of the defendants, locked up and never intended to be used again.If they had actually made any small experiment for the purpose of ascertainingwhat the proportions or properties of the different alloys would come to, that 50would scarcely have been said to be a making in violation of the patent; but youmust ask yourselves whether the making of a quantity which amounts to ten tons,I think, and of which the cost would be something like the sum of between £700

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or £800, could have been made for any other purpose at the time than for thepurpose of sale, although on second thoughts and on further consideration itmay have been deemed to be not a safe nor a proper thing to have used it asit then was made. "If such were the case there is no doubt that would be aninfringement of the patent."

In that passage Tindall C.J. was clearly drawing a distinction between a "smallexperiment" relating to the subject-matter of the invention (the properties and

10 proportions of the alloys used in the sheathings) and the making of a quantity of 10tons for the purposes of sale.

The next infringement case is really the classic authority on what is and what is15 not an experiment that does not amount to an infringement of a patent. It is Frearson

v. Loe (1878) 9 Ch.D. 48, a decision of Sir George Jessel, M.R. The case was anaction for infringement of a patent for an invention to an improved type of screwsand screwdrivers therefor. A question arose as to whether what the defendant haddone was a bona fide experiment or an infringement. Sir George Jessel dealt with

20 this question as follows. I read from page 66, the bottom paragraph, where he said:

"the other point raised was a curious one, and by no means free from difficulty,and what occurred with regard to that was this, that the defendant at various

25 times made screw blanks, as he said, not in all more than 2 lbs, by variouscontrivances by which no doubt screw blanks were made according to the plain-tiff's patent of 1870, as well as that of 1875; they seem to have been an infringe-ment of both. He said he did this merely by way of experiment, and no doubtif a man makes things merely by way of bona fide experiment, and not with the

30 intention of selling and making use of the thing so made for the purpose of whicha patent has been granted, but with the view of improving upon the inventionthe subject of the patent, or with the view of seeing whether an improvementcan be made or not, that is not an invasion of the exclusive rights granted bythe patent. Patent rights were never granted to prevent persons of ingenuity

35 exercising their talents in a fair way. But if there be neither using nor vendingof the invention for profit, the mere making for the purpose of experiment, andnot for a fraudulent purpose, ought not to be considered within the meaningof the prohibition, and if it were, it is certainly not the subject for an injunction.But, where you see a man using a machine as this defendant has done, under

40 claim of a right to use it, and under that claim of right he makes a quantity ofgoods, even though a small quantity, I cannot call that an experiment within themeaning of the rule as to experiments. He has made a machine, and, knowingit to be an infringement of patent, he claims the right to make and use it, andhis experiment is made to see how his machine works. That is the experiment

45 as he calls it, putting his machine to work from time to time, and then makingscrews according to the other patent, and making the screws with the view oftrying the screws themselves. It does not appear to me, when I consider thecircumstances under which the defendant made these alleged experiments, thatI ought to treat this as coming within the rule which prevents mere experiments

50 being subject to the liability of action being brought against those who makethem, and to the costs of an injunction being granted against them. In this caseI consider that the defendant was making the screws in exercise of an allegedright which has been disproved at the trial."

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In that passage Sir George Jessel drew a very clear distinction between whathe regarded as bona fide experiment with a patented invention and commercialexploitation of the patented invention; his explanation of bona fide experiment is tomy mind exactly what is intended by the wording of paragraph (b) of section 60(5)of the Patents Act 1977. 5

The last English case to which I refer is that of Molins and Molins Machine Co.Ltd. v. Industrial Machine Co. Ltd. (1937) 54 R.P.C. 94, a patent action in whichthe defendants were sued for infringement of the patent in suit which was for aninvention for an improved cigarette-making machine. The defendants were makers 10of cigarette-making machines—it was argued that what they had done, and of whichcomplaint was made, were experiments and did not amount to infringement. FarwellJ. dealt with this at page 108 in the report, starting at line 27:

"It was suggested that, even if that be so, there was no such user of the 15defendants' machine as would amount to infringement; that the only evidenceof user was in connection with certain experiments, and that they could not betreated as infringement of the patent. I will get rid of this part of the case at onceby saying that the evidence has satisfied me that there were acts which amountedto infringements, assuming, of course, that the patent is valid and therefore can 20be infringed.

"What happened was that certain machines were supplied by the defendantsto a firm of cigarette makers in Belfast. Those machines had this device inquestion, that is to say this helical device, and with the machines were sent twomen who were in the employ of the defendant company. They went to Belfast,they were there for some time, and they ran the machines with a view to testingthe machines and seeing what the nature of the cigarettes was that they producedand how far they were proved satisfactory; but they were also clearly beingintroduced into the factory in Belfast in the hope that the persons who ownedthe factory in Belfast might see fit to acquire such machines from the defendantcompany. Moreover, the machines were used for making cigarettes and makingcigarettes in large numbers; those cigarettes certainly found their way, whenmade, into the packing department of the Belfast manufacturer and, I have littledoubt, were ultimately sold to the public. I am quite incapable myself of seeinghow it can seriously be suggested that there was not such a user of the defendants'machine as amounts to an infringement if the patent itself be a valid patent."

In that case, therefore, although the defendants' machines were set up and tested .r,to see if they were satisfactory, they had been set up and so tested and used in thehope of a sale to the cigarette manufacturers to whom they were demonstrated—and had, indeed, been used to produce commercial quantities of cigarettes.

In my view the effect of the English authorities as to whether and when experimental 45use may amount to infringement is accurately stated in the following passage fromparagraph 3-216 of the fourth edition of Mr. Blanco White's Patents for Inventions:.

"Mere experiment with a patented invention would appear not to amount toinfringement; but it is the invention itself that must for this purpose be the subject 50of experiment and not (for instance) the product of a patented process or thecommercial potentialities of the invention. . . Commercial use, although by wayof demonstration, is not mere experiment for this purpose."

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Mr. Gratwick submitted that from a consideration of both the cited prior use and citedinfringement cases two factors emerged as to what has been regarded as experiment inthe context of our patent jurisprudence namely;

(1) An experiment is something done on a small scale having regard to the5 nature of the subject-matter of the invention, and

(2) it is done for the purpose of finding out something about the invention(e.g. whether it works or can be improved upon) rather than of proving ordemonstrating commercial efficacy of a product to those who may be concerned

10 with commercial use of the product.

Although hardly precise criteria, I think, on the authorities that submission is justified.

As to whether Stauffers' proposed trials would be an infringing use of the plaintiffs', ~ patented invention (on the assumption that TOUCHDOWN is an infringing product)

under the law, i.e. the common law, as it had been developed up to the enactmentof the Act of 1977, as I have already mentioned, Mr. Evans relied, and relied strongly,on the decision of the Supreme Court of Canada in the Micro case, an action forinfringement of patent. The action related to a process for the manufacture of

2Q trifluorperazine ("tfp") and the defendant, Micro, had applied for a compulsorylicence under the provisions for compulsory licences for inventions relating to foodand medicine in the Canadian statute corresponding to section 41 of the U.K. PatentsAct 1949. The defendants had made some small experimental batches of tfp. by thepatented process in two initial periods. The trial judge held that the making of these

~r small batches was an infringement as not being experiments to improve on theinvention but for the purpose of the defendants satisfying themselves they couldproduce tfp. on a commercial basis by the patented process as soon as they couldobtain a compulsory licence. On appeal from that decision the Supreme Courtreversed that finding of infringement (although upholding findings of infringement

, 0 in respect of other acts). In their judgment, after citing the passage from the judgmentof Sir George Jessel M.R. in Frearson v. Loe, quoted above, the court said:

"The use Micro was making of the patented substance here was not for profitbut to establish the fact that it could manufacture a quality product in accordancewith the specifications [of the patent in suit] . . . I cannot see that this sort ofexperimentation and preparation is an infringement. It appears to me to be thelogical result of the right to apply for a compulsory licence.

While it may not be necessary in each case to be in a position to show capacityto manufacture it is, I think, a reasonably prudent thing for an applicant"—i.e.

40 for a compulsory licence—"to be able to do . . . the fact that an applicant putshimself in a position to show that he is possessed of the equipment, skill andknowledge by experimentation does not, in my opinion, make him an infringer."

That case was decided by the Supreme Court on its own very special facts which45 were very different from those of the present case. Stauffers' proposed trials are not

to satisfy itself it can manufacture its TOUCHDOWN product commercially—it isand has been in commercial production since March 1983 and has sold the productcommercially in the U.K. to the extent of some £390,000 worth. The purpose of theproposed trials is to extend the potential market for it.

50In my judgment, on the proper construction of paragraph (b) of section 60(5) the

field trials proposed by Stauffer in whichever of Mr. Evans' three categories they may

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fall, are not for experimental purposes relating to the subject-matter of the plaintiffs'patent and, on the assumption that Stauffers' product TOUCHDOWN is an infringe-ment of that patent, those proposed field trials would be acts of infringement notexempted under paragraph (b) of section 60(5).

I should state that I have also had cited to me the judgment of Eichelbaum J. in 5the corresponding litigation in New Zealand* in which the plaintiffs sue the defendantsfor infringement of the corresponding New Zealand patent. In that judgment thelearned judge had to consider whether field trials on Stauffers' product SC.0224(which, as I have already explained, is that to which the name TOUCHDOWN isgiven—at least in the U.K.) by, or on behalf of, Stauffer being or to be held in New 10Zealand and directed to obtaining the necessary regulatory approvals for a projectedcommercial launch in New Zealand were uses which infringed the New Zealandpatent, on the assumption that the Stauffer product SC. 0224 itself infringed. (I shouldpoint out that the law in New Zealand under which the learned judge was consideringthe question was substantially that in force in this country prior to the coming into 15force of the Act of 1977 and, of course, New Zealand is a common law jurisdiction.)After considering a number of authorities including Frearson v. Loe, and the Molinscase, the learned judge said at page 566:

"When the defendants' user of SC 0224 in field trials in New Zealand is ~^considered in the light of these cases they all appear to me to point in the directionthat the defendants have gone well past the demarcation line of permittedexperimental use. Indeed I think Mr. Gault has a persuasive point when hesays that having regard to the stage to which the first defendant has taken thedevelopment of SC 0224, that is to say to the stage where in the United Kingdom ~<-it was in a position to launch it on the market commercially, the time when thedefendants may have been regarded as carrying out experiments of the permittedtype must have long gone by."

I can omit the next paragraph and pick up the judgment again in the bottomparagraph on page 36, where the learned judge continues: 30

"In my opinion the submission of law made on behalf of the defendants ispitched too high when it speaks of the necessity for actual or imminent threatof sales. I would be content to adopt Lord Wilberforce's expression, somederiving of advantage. Even if, as I think is implicit, the required concept is one 35of advantage in a commercial sense, it is in my view amply satisfied by thedefendants' activities here. I need not decide the status of trials carried out inthe privacy of a defendant's own premises, which in any event could not bepoliced. Here, in the view I have formed of the facts, the field trials are designedto obtain data necessary to achieve permission for commercial user in New 49Zealand. Even if initially that is only in the form of limited sales they are salesnevertheless, and a stepping stone towards a full commercial launch. Further,for the reasons already given, at the same time the defendants are able to toutSC. 0224 to potential customers and to make the community of ultimate usersin this country aware of the existence and efficacy of their product, albeit as 45something not available until some future date. Such uses, to my mind, clearlyfall within the ambit of use for deriving of commercial advantage, and as suchinfringe the plaintiffs' monopoly.

Eichelbaum J. then considered the Canadian decision in the Micro case and dis-tinguished it on its special facts much as I have done. 50

* [1984] F.S.R. 559 now under appeal.

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I am fortified by the judgment of Eichelbaum J. in my view that under the UnitedKingdom law prior to the coming into force of the Act of 1977, as to the extent towhich experimental user of a patented invention was exempted from constitutinginfringement of the patent, that law would not have extended to exempt from infringe-

5 ment the sort of field trials now proposed by Stauffer.

I must now refer shortly to Mr. Evans "possible alternative approach" which Imentioned earlier. It was that if I felt unable or unwilling to decide the question ofthe construction of paragraph (b) of section 60(5) at this stage, it would be necessary,

10 so he submitted, to consider the balance of convenience in relation to Stauffer'sspecific proposed activity, namely, their proposed field trials, and he submitted thatin that context the balance of convenience would weigh heavily against the plaintiffs.

However, I have decided the question of construction as, indeed, I was invited so15 to do by Mr. Evans from the outset—and I have decided against the construction

contended for by Stauffer and in favour of that contended for by the plaintiffs. Havingdecided the question of construction the need to consider Mr. Evans approach doesnot arise.

20 In the result I refuse to vary the injunction by the addition of a proviso in the termsof proviso (i) in the Notice of Motion.

There remains for consideration whether I should accede to the defendants' requestfor the addition of the proviso under (ii) in the Notice of Motion. Normally questions

25 as to experiments for the purposes of the action and/or counterclaim are dealt withunder the Summons for Directions under R.S.C., Order 104 rule 10(2) under whichthe court, on the hearing of the summons: "May give such directions (g) for themaking of experiments, tests, inspections or reports and otherwise as the court thinksnecessary or expedient . . . " I was not vouched any explanation why the normal

30 procedure and practice under the Rule should not be followed in this case, exceptthat Mr. Evans suggested that the variation of the injunction sought under (ii) of theproviso was "necessary for the defendants so as not to be at a disadvantage comparedto the plaintiffs prior to the summons for directions". I am not, as at present advised,clear what disadvantage it is suggested the defendants will be under prior to the

35 summons for directions. On this part of the defendants' present application Mr.Purnell's evidence in paragraph 12 of his affidavit of 13 June 1984 was as follows:

"Unless appropriate admissions are made by Monsanto in the course of thisaction I am advised that it is likely that the defendants will have to carry out

40 experiments for the purposes of the action. It has been proposed (but not yetdecided) that we make use of a U.K. based research organisation to carry outsome or all of these experiments. They will need to be put in possession of anappropriate quantity of TOUCHDOWN and perhaps other herbicides fallingwithin the terms of the injunction."

45It is, of course, highly desirable that before experiments are embarked upon in

a patent action the party proposing experiments should first seek admissions fromthe other side as to the facts which, in the absence of appropriate admissions, it wouldbe sought to establish by the proposed experiments. Much, if not all, of the very

50 heavy costs of experiments in patent actions and the loss of time occupied by theirperformance and repetition might thereby be avoided. In requesting such admissionsthere is, of course, no need to await the issue of the summons under R.S.C., Order104 rule 10, although in any case, that summons can be issued by the defendant if

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Dillon LJ. Monsanto Co. v. Stauffer Chemical Co. [19851 R.P.C.

a plaintiff delays doing so beyond the time stated in sub-rule (1). I was informed thatthe plaintiffs have already served a request for admissions on the defendants but Ihave not been told the defendants have yet sought from the plaintiffs the "appropriateadmissions" referred to by Mr. Purnell in his affidavit.

At present I can see no good reason for varying the injunction by adding the proviso 5(ii)—the injunction granted is until judgment "or further order" and, of course, inrespect of any directions that may be sought or given as to experiments for thepurposes of the action and counterclaim the court will ensure that neither side isdisadvantaged.

10In the result I refuse to vary the injunction as sought in the notice of motion and,

accordingly, dismiss the motion.

The defendants were given leave to appeal.15

In the Court of Appeal, the plaintiffs were represented as before. Julian Jeffs Q.C.,Kynric Lewis Q. C. and Christopher Floyd, instructed by McKenna & Co. appearedfor the appellants (defendants).

Dillon LJ.—This is a further interlocutory appeal in a patent action. It involves 20a claim for the modification of an interlocutory injunction previously granted andit raises issues of some importance in relation to section 60 of the Patents Act 1977.

The plaintiffs, the Monsanto Company, an American company, are the registeredproprietors of the patent in suit, letters patent No. 1,366,379, which relate to certain 25herbicides for agricultural use. The plaintiffs have for many years been marketingunder that patent in the U.K. and elsewhere a herbicide under the trademarkROUNDUP which has been enormously successful worldwide in killing couch grassand many other weeds.

30It is unnecessary on this application to go in any detail into the terms of the patent

in suit. According to the introductory paragraph, it relates to herbicidal compositions,more particularly to herbicidal compositions containing as their active ingredientscertain derivatives of a substance which the plaintiffs call glyphosate, to the use ofglyphosate derivates in killing plants and to certain novel glyphosate derivatives. 35Claim 1 claims a herbicidal composition according to a particular formula, which islengthy, carefully drawn and covers a very large number of permutations. Claim 30claims the process of killing undesired plants by the use of a composition accordingto that formula. Numerous other claims claim particular compounds derived fromglyphosate and particular compositions within the generality of Claim 1. 40

The defendants are another American company and its English subsidiary. Theyare also concerned with the manufacture and marketing of herbicides for agriculturaluse. They have devised a herbicide originally known as SC 0224 but since given thetrademark TOUCHDOWN, which they admit is intended to perform substantially 45the same function as ROUNDUP. Specifically, they derive TOUCHDOWN froma compound of glyphosate which is not one of those specifically claimed in the patentin suit and is not referred to in any part of the patent. The defendants therefore claimthat TOUCHDOWN does not infringe the patent in suit.

50The defendants began marketing TOUCHDOWN in theU.K. in August 1983,and

the immediate effect was that the writ in this action was issued by the plaintiffs on

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[No. 22] Court of Appeal Dillon LJ.

23 August 1983 claiming appropriate relief for infringement of the patent in suit. Theissue of the writ was followed on 30 September 1983 by the issue of a notice of motionfor an interlocutory injunction. That came before Falconer J. for effective hearingand by his order of 10 February 1984 he granted an injunction until judgment in theaction or further order in the meantime restraining the defendants from supplyingor offering to supply, making, disposing of, offering to dispose of, using, importingor keeping, whether for disposal or otherwise, herbicidal compositions based onglyphosate. Although the order does not specifically say so, it is common groundbetween the parties that it was only intended to prohibit the doing of the acts referredto within the jurisdiction of the English courts; in particular, it was not intended torestrict the activities of the first defendant in America where there is no injunction.

The defendants appealed against that order of Falconer J. That appeal was dis-missed on 22 May 1984 by a division of this court consisting of Dunn LJ. and myself. *

15 The basis of that decision was, first, that the plaintiffs had shown that there was aserious question to be tried as to whether TOUCHDOWN infringed claims 1 and30 of the patent and, second, that the balance of convenience favoured the grant ofan interlocutory injunction because under the provisions of the Patents Act 1977 thepatent will be subject to the grant of licences of right from 22 October 1987 and the

20 plaintiffs would be likely to suffer very serious damage then if the defendants wereleft free to establish a market in TOUCHDOWN until the trial of the action whichcould be a springboard for them for trading in competition with the plaintiffs undera licence of right after 22 October 1987."

25 At the end of the argument on the hearing of the former appeal counsel for thedefendants intimated that, even if the appeal failed, he wished to take a point onthe form of the injunction granted by Falconer J. This was elaborated by counsel afterthe judgment of the court had been handed down. It then apeared that the defendantswere asking, in reliance on section 60(5)(fe) of the Patents Act 1977, that the injunction

30 should be modified to exclude any act done for experimental purposes relating tothe subject-matter of the invention. On the other hand, the plaintiffs were assertingthat what the defendants wanted to do under their desired modification would notfall within the words of section 60(5)(6) at all. Since it appeared that the facts hadnot been ascertained and that further evidence on each side would probably be

35 required, this court left the defendants to make such further application to the judge,on proper evidence, as they might think appropriate.

A further notice of motion, seeking modification of the injunction, was thereforeissued by the defendants on 5 June 1984. This was heard by Falconer J. on 4 and

40 5 July 1984. He delivered his reserved judgment on 31 July 1984 and thereby declinedto modify the injunction4 It is against that order of 31 July, refusing any modificationof the injunction, that the present appeal is brought.

Section 60 of the 1977 Act is a new provision in U.K. patent law. It contains for45 the first time a statutory definition of what constitutes infringement of a patent, and

a statutory provision that certain acts are not to constitute infringement. The schemeof the section is that subsection (1) covers what is commonly called direct infringe-ment, in terms that are not material to this appeal and subsection (2) covers indirectinfringement. Subsection (5) then provides, so far as material, that:

* [1984] F.S.R. 574.$ [1985] F.S.R. 55.

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Dillon LJ. Monsanto Co. v. Stauffer Chemical Co. [1985] R.P.C.

"(5) An act which, apart from this subsection, would constitute an infringe-ment of a patent for an invention shall not do so if—

(a) it is done privately and for purposes which are not commercial;

(6) it is done for experimental purposes relating to the subject-matter of theinvention". 5

There follow further sub-heads (c) to (/) which are not material. Subsection (6) thenprovides:

"(6) For the purposes of subsection (2) above a person who does an act in inrelation to an invention which is prevented only by virtue of paragraph (a), (b)or (c) of subsection (5) above from constituting an infringement of a patent forthe invention shall not be treated as a person entitled to work the invention . . . "

Because an argument is founded on subsection (6) and its reference to subsection 1 <-(2) I also set out subsection (2):

"(2) Subject to the following provisions of this section, a person (other thanthe proprietor of the patent) also infringes a patent for an invention if, whilethe patent is in force and without the consent of the proprietor, he supplies or ~n

offers to supply in the United Kingdom a person other than a licensee or otherperson entitled to work the invention with any of the means, relating to anessential element of the invention, for putting the invention into effect when heknows, or it is obvious to a reasonable person in the circumstances, that thosemeans are suitable for putting, and are intended to put, the invention into effectin the United Kingdom." 2 5

I must next refer to section 130(7) of the Act, which reads as follows:

"(7) Whereas by a resolution made on the signature of the Community PatentConvention the governments of the member states of the European Economic ^0Community resolved to adjust their laws relating to patents so as (among otherthings) to bring those laws into conformity with the corresponding provisionsof the European Patent Convention, the Community Patent Covention and thePatent Co-operation Treaty, it is hereby declared that the following provisionsof this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 3 5

54,60,69,72(1) and (2), 74(4), 82,83,88(6) and (7), 100 and 125, are so framedas to have, as nearly as practicable, the same effects in the United Kingdom as thecorresponding provisions of the European Patent Convention, the CommunityPatent Convention and the Patent Co-operation Treaty have in the territoriesto which those Conventions apply." 40

So far as section 60 of the Act is concerned, the corresponding provisions of theCommunity Patent Convention are Articles 29,30 and 31 which relate to communitypatents. Article 31 provides that the rights conferred by a community patent shallnot extend to (inter alia) 45

"(b) acts done for experimental purposes relating to the subject-matter of thepatented invention."

The defendants, in seeking a modification of the injunction, rely on section 60(5)(fe) 50of the Act, and they say that the injunction should be modified to enable them to

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carry out experiments relating to the subject-matter of the invention. They saythat the object of any injunction is merely to restrain infringement and that suchexperiments would not be infringing acts even if, which they deny, the making andsale of TOUCHDOWN would infringe the patent.

5 By their notice of appeal they ask that the injunction be modified so as not to preventthem (i) carrying on field trials by themselves or by others of their TOUCHDOWNherbicide and (ii) performing experiments by themselves or by others for the purposesof this action and their counterclaim (which seeks revocation of the patent in suiton various grounds). So far as field trials are concerned, the notice of appeal sets

10 out three categories of field trial which the defendants want to carry out, viz.:—

(1) trails to be carried out by the second defendant's personnel on the Staufferfarm, which is a 90 acre farm in Essex owned by the defendants;

15 (2) trials to be carried out by the second defendant's personnel on land rentedby the second defendants on other farms; and

(3) trials to be carried out for the defendants by third parties such as ADAS(the Agricultural Development Advisory Service run by the Department of

20 Agriculture), the Forestry Commission, certain Water Authorities and others.

Mr. Jeffs for the defendants has further pointed out in argument that the injunctionas drawn prevents the defendants, despite section 6O(5)(b), from conducting in thiscountry even laboratory or glasshouse experiments relating to the subject-matter of

25 the invention.

The right of the proprietor of a patent to an injunction is essentially merely a rightto an injunction to restrain infringement of the patent. An injunction which is simplyworded as an injunction to restrain infringement would leave the defendant free to

30 carry out any experiments which, by virtue of section 60(5)(b), do not constituteinfringement, but it is not practicable to word an interlocutory injunction so simply,where, as in the present case, it cannot be decided until the trial of the action whetherthe product which the defendant seeks to market does or does not infringe the patent.In such a case, if an injunction is granted, it must prohibit certain acts whether or

35 not they would be infringements leaving the defendant to his remedy under the cross-undertaking in damages if it is held at the trial that those acts do not infringe. Similarly,it is not desirable simply to qualify the injunction by a proviso that it shall not extendto acts done for experimental purposes relating to the subject-matter of the invention,where, as on the present appeal, the real dispute between the parties is over whether

40 what the defendants want to do falls within those words.

We have therefore heard detailed argument on the meaning and effect of the words"for experimental purposes relating to the subject-matter of the invention".

45 Mr. Gratwick for the plaintiffs has sought to support his arguments by referenceto earlier decisions of our courts on phrases such as "reasonable trial" or "reasonabletrial or experiment" in various contexts in earlier U.K. Patent Acts. He has submittedthat Parliament, by using the phrase "for experimental purposes" must be taken tohave endorsed the earlier decisions of the English court. For my part, however, I

50 am afraid that I do not find this approach of any assistance. Section 60 was, as section130(7) shows, enacted to bring U.K. patent law into line with the correspondingprovisions of the Community Patent Convention and I have no reason to suppose

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that the signatories of that Convention were concerning themselves with the minutiaeof earlier U.K. patent law. Beyond that, however, the word "experiment" is anordinary word in the English language and has never been a term of art in U.K. patentlaw.

Mr. Gratwick further submits that the words "for experimental purposes" are 5limited to experiments in the privacy of a laboratory or glasshouse. I cannot, however,see why that should be so. What may legitimately be the subject of experiment mayperhaps depend upon the nature of the product but, with herbicides or compositionsto stimulate plant growth, it must surely be a legitimate area for experiment to seeif results obtained in the laboratory or glasshouse can also be achieved in natural 10conditions in the open air where the product will have to be used.

Mr. Gratwick urges that the words in section 60(5)(b) "relating to the subject-matter of the invention" ought to be narrowly construed so as to exclude experimentsdirected to the commercial exploitation of the invention. For my part, however, I 15find it difficult to draw any such hard and fast line. The distinction between thewording of sub-head (a) and the wording of sub-head (b) in section 60(5) indicatesthat experimental purposes in sub-head (b) may yet have a commercial end in view,as do all the activities of companies such as the parties to this dispute. I would regardthe sort of experimental activity which was considered by the Supreme Court of 20Canada in Micro-Chemicals Ltd. v. Smith Kline and French Inter-American Ltd.(1971) 25 D.L.R. 79 at the top of page 89, viz. a limited experiment to establishwhether the experimenter could manufacture a quality product commercially inaccordance with the specification of a patent, as being covered by the words "forexperimental purposes relating to the subject-matter of the invention". 25

The defendants' farm in Essex is described in the evidence as a research farm, andthat makes sense in the context of all that is disclosed on the evidence about thedefendants' activities. Accordingly, I would modify the injunction by providing that ,.„it shall not extend to acts done for experimental purposes relating to the subject-matter of the invention in laboratories or glasshouses in the United Kingdom or onthe defendants' farm in Essex.

The second category of field trials for which the defendants seek a relaxation covers 35trials to be carried out by the second defendant's personnel on land rented by thesecond defendant on other farms. What the defendants want to do, by arrangementwith farmers in different parts of the country, is to use TOUCHDOWN on differentcrops, and at different stages of the year, and at different concentrations, on smallareas, of perhaps a couple of acres each, on some 20 or 25 farms in different parts 40of the country and to tabulate the results. They submit with obvious force that, ifit is necessary to experiment to see if what is successful in the laboratory or glasshouseworks successfully out of doors, it is necessary that the experiments should be carriedout in different soil conditions and in different climatic conditions. What works inCalifornia will not necessarily work in England and what works on their farm in Essex 45may not necessarily work in Wales or Cumbria.

The real problem here, however, is whether, in the light of all they have alreadydone which culminated in the commercial launch of TOUCHDOWN in August 1983, 50what they want to do now by these field trials can fairly be classified as experimental, oris in truth merely a matter of amassing statistics to further the commercial exploitation,

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after 22 October 1987, of a product whose qualities they already know. It is thereforenecessary to look at some of the evidence.

For the plaintiffs there are three relevant witnesses, Dr. Hunsted, Mr. Sarfaty andMr. O'Keefe. Dr. Hunsted, who is based in America, explains that, if a herbicidal

5 compound shows promise in laboratory or greenhouse tests, it is subjected to a seriesof field tests to determine (a) its performance in actual field situations under varyingweather and other environmental conditions in widely separated geographical areas;(b) optimum application rates; (c) effects of growth stages; (d) effects of differingformulations; and (e) the relevance, if any, of local agricultural practices. He goes

10 on to say that, if results continue to be favourable, such testing proceeds over severalyears in order to satisfy the requirements of the Environmental Protection Agencyin the U.S.A. and of equivalent bodies throughout the world. Mr. Sarfaty, based inEngland, says that, before the plaintiffs sell a herbicide product in the U.K., it hasto be evaluated under U.K. conditions. Mr. O'Keeffe, also based in England, explains

15 the position in greater detail and I set out paragraphs 3 to 8 of his first affidavit:

"3. Before any herbicide product is sold it is highly desirable that it be properlytested to prove first that it is safe and secondly that it is effective There is, asyet, no legislation which regulates the sale of herbicides in the U.K. such as

20 would correspond with, for example, the control (under the Medicines Act1968) of pharmaceutical products. Nevertheless, the major manufacturers anddistributors of agrochemical products in the U.K. do not market products untilthey believe them to be both safe and efficacious. With a view to ensuringadequate safety, and satisfying users of these products that they have been

25 properly tested, there are now in existence two non-statutory schemes for thetesting of agrochemicals.

4. The Pesticides Safety Precautions Scheme ("PSPS") is operated by theMinistry of Agriculture in conjunction with the Health and Safety Executive.The scheme is designed to ensure that pesticides (including herbicides) marketedin the U.K. are not hazardous to operators, consumers of the end product, towildlife or to the environment in general. The scheme is concerned with twomain aspects—General toxicology and residue levels or metabolites, when the

„ pesticide is used according to the manufacturer's proposed label recommen-dations. The scheme is particularly concerned not only with ensuring that theproduct is inherently safe when properly used, but that the manufacturer's labelis appropriate both to ensure that the product is used in the intended mannerand only recommends uses for which the product has been adequately tested.

405. Clearance of a herbicide under the PSPS will normally follow 4 stages for

the first use to which the herbicide is proposed to be put and 3 stages forsubsequent label recommendations. Stage 1 is for trials clearance. Details ofthe chemistry, formulation, LD50 and mutagenicity of the herbicide must be

45 supplied.

6. Once satisfactory data have been generated, submitted and reviewed, alimited clearance (Stage 2) will be granted. Information on toxicity, histology,pathology, irritancy, major residues, and a copy of the draft label which is

50 proposed to be used, must all be supplied at the second stage. Limited sales arethen permitted and trials may be carried out by farmers. Restricted advertisingis also permissible.

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7. Application may then be made for provisional commercial clearance (Stage3) giving further details, including chronic toxicity, effects on fish, bees, birds,etc., residues in the soil and in the crop, teratogenicity, and finalisation of the

proposed label. Once provisional commercial clearance is granted, extensiveadvertisement and sales are permitted but further information must still be 5supplied back to the PSPS and provisional commercial clearance must berenewed on an annual basis until full commercial clearance is obtained on thebasis of this further information together with details of final toxicology, residuesin down stream processes etc. It is only then that full commercial clearance (Stage4) may be granted and the herbicide may be sold and advertised in an unrestricted 10manner for the label recommendations cleared.

8. The Agricultural Chemicals Approval Scheme ("ACAS") is operated bythe Ministry of Agriculture through the Agricultural Chemicals Approval Organ-isation. The purpose of the Scheme is stated to be 'to enable users to select 15and advisers to recommend efficient and appropriate proprietory brands ofagricultural chemicals and to discourage the use of unsatisfactory products'.Approval under the ACAS cannot be given until a product's safety has first beenestablished (at least to the provisional commercial clearance stage) under thePSPS and appropriate precautions have been recommended. Once approved 20under this Scheme the manufacturer is entitled to market a product with theAgricultural Chemicals Approval Scheme Mark ('A' mark)."

The defendants had been granted provisional commercial clearance (stage 3) beforetheir commercial launch of it in August 1983, for the use of TOUCHDOWN on 25stubbles and non-crop areas but they have not yet been granted full commercialclearance (stage 4).

As I read their evidence, it is towards this full commercial clearance from the PSPSand approval from ACAS that their proposed field trials in categories (2) and (3) 30in the notice of appeal are primarily directed.

The defendant's witness is Mr. Purnell. In an affidavit on the earlier motion hesaid this:

35"TOUCHDOWN herbicide is a novel compound and as such has been sub-

jected to all the laboratory and field tests necessary to define its efficacy, appli-cation rate, method of use, timing, rainfastness etc. In Europe in 1982 over 80such trials were completed and in 1983 this increased to over 300 trials mainlyin non crop situations. In the UK to date over 50 trials have been conducted 40which include the detailed trials conducted at Stauffer's farm. Initially, trialswere conducted in which TOUCHDOWN herbicide was sprayed on to separateplots of grass weeds at intervals from just after weed emergence to a stage whenthe grass weeds were 20 cm high. In this way the optimum time of applicationwas defined. In addition rainfastness was investigated by applying artificial irri- 45gation to test plots in different quantities and at different times after sprayingof TOUCHDOWN herbicide. Once important parameters of this type had beendefined a programme of field trials throughout the U.K. was undertaken as Ihave described and is still continuing. It is expected that several hundred trialswill be carried out in the U.K. during the next few years before development 50of TOUCHDOWN herbicide is complete."

In his evidence on the present motion he gives greater detail of the earlier testing:

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"1982 Autumn—10 post-harvest trials on cereal stubbles (in East Anglia,Warwickshire, Bedfordshire). (We also conducted 10 to 15 trials on our ownfarm in Essex on stubbles and in orchards).

"1983 June/July—24 pre-harvest trials, i.e.5 2 winter barley (Bucks)

6 spring barley (Herts, Hants, Bucks, Scotland)8 winter wheat (Bucks, Cambs, Hants, Scotland)6 oilseed rape (Cambs, Yorks, Hants, Beds)2 pea (Yorks, Norfolk)"

10He summarises what the defendants now want to do in the way of field trials in

paragraph 3 of his affidavit in support of the present motion as follows:

"As mentioned in my previous Affidavit we have conducted field trials in the15 U.K. in both 1982 and 1983 and we are about 40 per cent, of the way through

the planned field trial programme. So far we have conducted one year's trialson cereal stubble and a year's trials pre-harvest on wheat, barley, oilseed rapeand peas. To complete the programme we need to carry out the following trials:

20(a) In 1984, both pre-harvest trials and post-harvest stubble trials on wheat,

barley, oilseed rape and pea crops. For each crop the area proposed to betested is between 5 and 10 hectares based on the standard application rateof 4 litres of TOUCHDOWN per hectare.

25(b) In 1985, trials on grassland destruction prior to re-seeding or ploughing,

aquatic weed control in water courses, river banks and reservoirs, forestryuses in relation to young plantations and established trees in industrial areasand in homes and gardens.

(c) In 1986 much of the work carried out in 1985 would be repeated since atleast two years of biological trials data is required before a product canreasonably confidently be recommended for a particular application as beingboth effective and safe."

35The conclusion of Falconer J. on this aspect of the case was that the defendant's

proposed trials were not to satisfy themselves they can manufacture TOUCHDOWNcommercially, because they had been in commercial production in 1983 and had soldthe product commercially in the U.K. to the extent of some £390,000 worth. The

40 purpose of the proposed trials was to extend the potential market for TOUCH-DOWN, particularly, as I understand it, by obtaining the further PSPS and AC ASclearance and approval. As I understand his judgment, Falconer J. agreed with theviews of Eichelbaum J. in the High Court of New Zealand, where that judge saidin Monsanto Co. v. Stauffer Chemical Co. (N.Z.) Ltd. [1984] F.S.R. 559:

45"When the defendants' user of SC 0224 in field trials in New Zealand is

considered in the light of these cases they all appear to me to point in the directionthat the defendants have gone well past the demarcation line of permittedexperimental use. Indeed I think Mr. Gault has a persuasive point when he says

50 that, having regard to the stage to which the first defendant has taken thedevelopment of SC 0224, that is to say to the stage where in the United Kingdomit was in a position to launch it on the market commercially, the time when the

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defendants may have been regarded as carrying out experiments of the permittedtype must have long gone by."

Trials carried out in order to discover something unknown or to test a hypothesisor even in order to find out whether something which is known to work in specificconditions, e.g. of soil or weather, will work in different conditions can fairly, in my 5judgment, be regarded as experiments. But trials carried out in order to demonstrateto a third party that a product works or, in order to amass information to satisfy athird party, whether a customer or a body such as the PS PS or ACAS, that the productworks as its maker claims are not, in my judgment, to be regarded as acts done "forexperimental purposes". The purposes for which tests or trials are carried out may 10in some cases be mixed and may in some cases be difficult to discern; indeed, in thepresent case, if fuller evidence is given at the trial, a different result may then bereached. On the affidavit evidence before this court, it is not clear to me what thedefendants are still wanting to find out about TOUCHDOWN. On that evidence,if I ask, in relation to the defendants' proposed field trials of category (2) to be carried 15out by the second defendant's personnel on land rented on other farms, the broadquestion whether those trials would be carried out, or done, for experimental pur-poses, my answer is that they would not; they would be carried out in order to obtainthe approval of the PSPS and ACAS.

20I therefore agree with Falconer J. that the injunction should not be modified to

permit the defendants to carry out field trials of category (2).

By the same reasoning, the injunction should not be modified to permit the defend- 2^ants to carry out field trials of category (3), trials to be carried out on their ownlands, albeit for the defendants, by ADAS, the Forestry Commission, certain WaterAuthorities and others. I should add that the defendants face additional difficultiesin relation to this category. The Forestry Commission and the Water Authoritiesare customers of the plaintiffs for ROUNDUP and are potential customers of the ™defendants for TOUCHDOWN if the marketing of TOUCHDOWN becomes per-missible. Beyond that the field trials would be carried out by the Forestry Commissionand the Water Authorities and not by the defendants and, even though they wouldbe carried out for the defendants in the sense that full data of the trials would besupplied to the defendants, they would be carried out for the purposes of the Forestry ->rCommission and the Water Authorities in eradicating weeds at the discretion of theForestry Commission or the Water Authorities on Forestry Commission or WaterAuthorities' land. Against this background, there is at least force in the argument,which the judge appears to have accepted, that the effect of subsection (6) of section60 is to leave it an infringement under subsection (2) which is not saved by subsection AQ(5) for the defendants to supply TOUCHDOWN to the Forestry Commission or theWater Authorities for the latter to use for their own benefit. I find it unnecessaryto reach a conclusion on this argument, and I prefer not to as the section is new andthe argument may have wider implications than have so far been explored.

45I turn to the final issue on the appeal, the performing of experiments for the

purposes of this action and the counterclaim. This has nothing to do with field trialsfor the development or promotion of TOUCHDOWN. The defendants have pleadedthat the patent is invalid for obviousness and prior publication, and they want to showthat, before the plaintiffs' invention, glyphosate was, and was known to be, herbicidal. 50They have also stated that it is their intention to amend their counterclaim by pleadingadditionally that the patent is invalid for inutility and insufficiency, and they want

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to demonstrate that by experiments. In addition, on the question whether TOUCH-DOWN infringes the patent, they want to conduct experiments to show how theprocess of killing weeds by the patented process works, in order to emphasise thefunction and significance of the caution which represents the difference between the

5 compound which the defendants have used for TOUCHDOWN and the compoundsspecifically claimed by the plaintiffs in the patent, one of which is used for ROUND-UP.

The learned judge treated this part of the defendants' motion as an application10 for directions for the making of experiments under RSC, Order 104 Rule 10. He

dismissed it as premature because the defendants have not yet served any requestfor admissions, and admissions may make experiments in the course of the actionunnecessary. In this court Mr. Jeffs has put the defendants' case on section 60(5)(6)and not on the court's discretion under Order 104.

15I do not think there is any practical difficulty. It is not in dispute that, by one route

or another, the defendants will be able to carry out whatever experiments—truly socalled—they really require for the just disposal of the action and counterclaim. Theinjunction does not prevent them carrying out experiments in America to identify

20 areas where experiments under Order 104 may be helpful to their case. If the injunc-tion is modified as I have already proposed, it will not preclude experiments inlaboratories or glasshouses in the U.K. or on the defendants' farm in Essex. Whenthey know precisely what experiments they want to bring into this action, they canserve the appropriate request for admissions and, in the light of the response to that,

25 can apply under Order 104. I would not modify the injunction any further since Icannot see what more the defendants really need at this stage, or what they are reallyafter.

In summary, therefore, I would vary the judge's order so as to modify the injunction30 to the extent I have indicated but no further.

Sir Denys Buckley.—I agree.

Watkins LJ.—I agree.

After discussion, the following order was made:

IT IS ORDERED that this appeal be allowed to the extent that upon the Defend-AQ ants undertaking to this Court through Counsel:

(i) that they will keep true and accurate records (showing at least the detailsset forth in the Schedule hereto) of all the TOUCHDOWN herbicide which theyhold in their possession or control in the United Kingdom at the date hereof or

45 which, in accordance with the following provisions of this Order, is importedby them subsequent hereto;

(ii) that they will permit the Plaintiffs by their solicitors or other independentexperts to inspect such records at all reasonable times upon reasonable notice.

50IT IS ORDERED that the injunction contained in the Order of the Honourable

Mr Justice Falconer dated 10 February 1984 be varied by the addition of the followingproviso, that is to say:

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Monsanto Co. v. Stauffer Chemical Co. [1985] R.P.C.

"Nothing in this Order shall prevent the Defendants or either of them whetherby their directors, officers, servants or agents from performing acts done forexperimental purposes relating to the subject matter of the invention in laborato-ries or glasshouses in the United Kingdom or on the Defendants' research farm 5in Essex."

AND IT IS FURTHER ORDERED that the Defendants do pay three quartersof the Plaintiffs' costs of this appeal and of the Respondent's Notice filed on behalfof the Plaintiffs such costs to be taxed by a Taxing Master. 10

AND IT IS FURTHER ORDERED that the Defendants application to presenta petition of appeal to the House of Lords be refused.

The defendants subsequently petitioned 15the House of Lords for leave to appeal,but this was refused.

Printed by HMSO, Edinburgh PressDd 8817450 C15 2/86 (230674)

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monsanto co. v. stauffer chemical co. and another

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