DEAD CONVENTION "LIVES" AS INTERPRETATIONAL TOOL; MORE NEW DIRECTIONS IN COPYRIGHT

Dead Convention "lives" as interpretational tool

Right: Yeda lost its appeal. Some may say its logo doesn't have much appeal either ....

The Court of Appeal for England and Wales (Sir Anthony Clarke MR, Keene and Jacob LJJ) yesterday dismissed against the decision of Mr Justice Lewison in Yeda Research & Development Ltd v Rhône-Poulenc Rorer Holdings, Imclone Systems and the Comptroller [2006] EWCA Civ 1103, which you can read in full on BAILII.

This was an appeal by Yeda against a ruling that its amendments to a written statement, in support of its claim to joint ownership of a patent registered in the name of Rhône-Poulenc and exclusively licensed to Imclone, should not have been allowed. The grant of a European patent to Rhône-Poulenc, designating the UK among other jurisdictions, was published in the European Patent Bulletin on 27 March 2002. On 26 March 2004, Yeda made a reference to the Comptroller of Patents claiming joint ownership of that patent. On 29 June 2005, Yeda filed the contested statement in which it claimed sole ownership of the patent, seeking joint ownership as an alternative claim. Rhône-Poulenc objected to those amendments on the ground that they had been submitted out of time under the Patents Act 1977, section 37(5). After the Comptroller allowed the amendments, Rhône-Poulenc appealed on the ground that section 37(5) imposed a two-year limitation period for claiming entitlement to a patent that had been granted: this period had expired before Yeda submitted its amendment. Lewison J allowed the appeal, agreeing that the amendments should not have been allowed: since they constituted a new claim to sole ownership, they fell outside the limitation period of section 37(5). Yeda appealed.

The Court of Appeal, whose judgment was given by Lord Justice Jacob, dismissed the appeal on the following basis:

* Section 37(5) had to be construed in the light of section 130(7) of the 1977 Act, which required the provisions of the Act to be given the same meaning as the corresponding provisions in the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty. This required the courts to read those provisions directly.

* Even though the Community Patent Convention never came into force, the court had to construe section 37(5) as having the same meaning as the Community Patent Convention Article 23, which prevented the bringing of entitlement claims more than two years after a patente was granted.

* It made no sense for section 130(7) to apply only when the Community Patent Convention came into effect.

* The Conventions mentioned in section 130(7) were part of the travaux préparatoires of the 1977 Act and, on conventional principles as to construction, the United Kingdom provisions should be construed so as to have the same meaning as the provisions upon which they were based.

* In this case there was a complete statutory bar to Yeda's amendment, which had to be disallowed.

The IPKat agrees, also noting the Court's interesting discussion of the phenomenon that, while a claim of sole ownership may be amended to a claim for joint ownership after the expiry of the period - since the greater claim automatically includes the lesser - that reasoning does not permit the out-of-time amendment of a joint ownership claim to a sole ownership claim. Merpel agrees but adds, it still seems odd that, despite the fact that the Community Patent Convention never came into force (and never will), it can still influence the construction of a provision of national patent law.


More New Directions in Copyright

Last August the IPKat reviewed New Directions in Copyright Law, Volume 1, edited by Birkbeck, University of London Professor Fiona Macmillan. He's pleased to see that a second volume of essays along similar lines has now been published, also by Edward Elgar.

What the publisher says:

"This second volume contains further exploration of the themes considered in Volume 1, namely the theoretical framework of copyright, and the convergence, divergence and globalisation of copyright.

New Directions in Copyright Law, Volume 2 offers valuable insights into developments in rights neighbouring on copyright, such as the EU database directive and television broadcast copyright. It also considers the protection of traditional knowledge – such as the legal protection of folklore, freedom of speech and communication channels. In addition the book investigates copyright and new technologies, taking examples from the music industry and from digital policing. Finally, the authors present views on the tension between corporate power and human rights in the context of copyright, questioning whether it is possible to strike a productive and meaningful balance.

With contributions from leading copyright scholars and commentators from a diverse range of theoretical and disciplinary backgrounds, this book will be of interest to all those concerned with the problems plaguing the modern copyright system".

What the IPKat says: for those (like the IPKat) who enjoy an eclectic approach to copyright and are prepared to see it in many guises, some quite surprising, this is a lovely collection of papers. Not all the chapters are copyright-specific: "The Productive Potential of Intellectual Property Rights: Governance and Value Creation Processes" by Birgitte Andersen and Sue Konzelmann is a case in point. And even some of the chapters that are copyright-specific have plenty of thoughts, ideas and analtyical method that can exported to other IP rights. Don't wait till Christmas - buy this book now!

Bibliographical details: x + 336pp. Hardback ISBN 1 84542 261 9. Price: £58.50 from the publisher's website. Rupture factor: insignificant - the book is comfy to hold and easy to lift.

Full details of Volume 2 here (since it looks the same as Volume 1, the publishers have retained the cover shot for Volume 1, above right, on their webpage for Volume 2).