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Thursday, 25 October 2007

House of Lords overturns CA in Yeda appeal

The long-awaited patent appeal in Yeda Research and Development Company Limited v Rhone-Poulenc Rorer International Holdings Inc and others [2007] UKHL 43 was handed down yesterday. The IPKat heard the news from his Australian friend Duncan Bucknell. Unusually, a majority of three of the five Lords of Appeal in Ordinary could be described as IP judges: Lord Hoffmann, Lord Walker of Gestingthorpe and Lord Neuberger of Abbotsbury (the other judges being Lord Phillips of Worth Matravers and Lord Mance).

In short, this was an appeal by Yeda against the Court of Appeal's refusal to allow amendments to its reference to the Comptroller General of Patents, under the Patents Act 1977 s.37(1), of the question of the true proprietorship of a patent owned RPR. This patent was for a treatment for cancer involving the use of certain chemicals in combination. Yeda initially filed a reference, alleging that it should be a joint proprietor of the patent along with RPR, asking that scientists working on its behalf should be named as co-inventors. Subsequently, following the decision of the Court of Appeal in Markem Corp v Zipher Ltd [2005] EWCA Civ 267, Yeda applied to amend its statement by

* adding references to other rules of law on which it relied for its title to the patent, and

* alleging that its scientists were the sole inventors and that the patent should therefore be transferred into the name of Yeda alone.

By the time the application for amendment was made, the two-year limitation period stipulated under the Patents Act 1977, s.37(5), had expired.

In this action the questions for determination were
(i) what a person claiming entitlement to a patent in someone else's name had to prove: was it enough for him to show that he was the inventor and that the registered proprietor was not, or did he have to allege that the registered proprietor had procured registration by breach of some other rule of law? and

(ii) whether, after the expiry of the two-year limitation period, a person could amend a claim for joint entitlement, to make it a claim to sole entitlement.
Allowing the appeal, the House of Lords (for whom Lord Hoffmann gave the main speech) said as follows:
* Sections 7(2) and s.7(3) of the Patents Act 1977 provided an exhaustive code for determining who was entitled to the grant of a patent.

* the first step in any dispute over entitlement was to decide who was the inventor of the claimed invention: this was the actual deviser of the invention.

* by s.7(4), a person who sought to be added as a joint inventor bore the burden of proving that he contributed to the inventive concept underlying the claimed invention; a person seeking to be substituted as sole inventor bore the additional burden of proving that the inventor named in the patent had not contributed to the inventive concept.

* there was nothing in the statute that said that entitlement depended on anything other than being the inventor. Nor was there any justification, in a dispute over who was the inventor, for importing questions as to whether either claimant had some personal cause of action against the other.

* the result in Markham was correct, the broad principle it established -- that any claim to entitlement to a patent, even by someone claiming simply to have been the inventor, required reliance upon "some other rule of law" -- was wrong, so that decision would be overruled. The first set of amendments sought by Yeda was thus unnecessary.

* an amendment of a claim for joint entitlement to a claim to sole entitlement was not the assertion of a new claim;

* proceedings under s.37(1) were not an ordinary civil claim, but rather a reference of a question to the comptroller. The statement accompanying the reference was not analogous to a claim form asserting a cause of action in a court of law, and the question of whether a claim to full entitlement was a new or different claim was irrelevant.

* the real question was whether amendment of the statement of facts would make the reference a new one. Plainly, it would not. In this case the reference had been made within the two-year period, identifying the statutory questions referred to the comptroller. The comptroller was still being asked to decide those questions and it was difficult to see how any amendments to the accompanying statement could make it a different reference.
The IPKat thinks this is plainly right and that it makes good sense too.

7 comments:

David said...

What worries me is why Lord Hoffmann apparently thinks that the Rules to the UK Patents Act 1977 came out in 1955. Some confusion perhaps, or was he still thinking about the 1949 Act?

Anonymous said...

Isn't that a cheap shot at an obvious typo?

Anonymous said...

David, a slight typo perhaps? 1995 was clearly meant.

David said...

If it was an obvious typo, one would expect it to appear only once. It appears 3 times. Strange.

cath said...

Hi, is there a typo in saying the judgement confirmed the result in Markham was correct? I'm a student and have managed to confuse myself on this!

Jeremy said...

Lord Hoffmann said: "In my opinion, therefore, the broad principle laid down in Markem Corp v Zipher Ltd [2005] RPC 31 and applied by the Court of Appeal in this case was wrong".

Anonymous said...

The House of Lords was saying that the CA disposed of the action in Markem v Zipher correctly i.e. the result was correct. What was wrong was where the CA said that it was always necessary to establish a cause of action against an incumbent proprietor. Section 7 provides a complete code of who is entitled to be the proprietor: it is wrong to build into that code an unstated requirement for a cause of action.

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