| PATENT — Entitlement reference — Amendment — Claim seeking joint ownership of patent changed to claim for sole ownership — Whether amendment constituting new claim made outside time limit — Patents Act 1977, s 37(1)
Rhone-Poulenc Rorer International Holdings Inc and another v Yeda Research and Development Co Ltd (Comptroller General of Patents, Designs and Trademarks intervening) [2007] UKHL 43
HL(E): Lord Hoffmann, Lord Phillips of Worth Matravers, Lord Walker of Gestingthorpe, Lord Mance and Lord Neuberger of Abbotsbury: 24 October 2007
When a reference pursuant to s 37(1)(a) of the Patents Act 1977 for joint ownership of a patent had been made and the Comptroller of Patents Designs and Trademarks was seised of the matter, an amendment so as to claim sole ownership of the patent did not amount to the making of a new or different claim which was outside the limitation period.
The House of Lords so held, allowing an appeal by the claimants, Yeda Research and Development Co Ltd, from a decision of the Court of Appeal (Sir Anthony Clarke MR, Keene and Jacob LJJ) [2007] Bus LR 1 on 31 July 2006 dismissing the claimants’ appeal from the interim decision of Lewison J in the Patents Court [2006] RPC 605 on 16 February 2006, reversing the decision on 20 October 2005 of Mr R C Kennell, Deputy Director of the Patents Office acting for the Comptroller-General of Patents, Designs and Trademarks, who held that the claimants were entitled to make amendments to a written statement of case supporting a reference filed on 26 March 2004 for ownership of a patent granted to the defendants, Rhone-Poulenc Rorer International Holdings Inc and ImClone Systems Inc.
After the claimants had filed their reference, the Court of Appeal gave judgment in Markem Corpn v Zipher Ltd [2005] RPC 31. The first set of amendments, made in compliance with the ruling in that case, added other rules of law upon which the claimants relied for its title. The second set of amendments was to allege that the claimants were the sole owners of the patent since scientists at the Weizmann Institute of Science in Israel were the sole inventors and the claimants were the assignees of the rights of the inventors.
LORD HOFFMANN said that the first step in any dispute over entitlement must be to decide who the inventor or inventors of the claimed invention were. Only when that question had been decided could one consider whether someone else might be entitled. 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 who sought to be substituted as sole inventor bore the additional burden of proving that the inventor named in the patent did not contribute to the inventive concept. That in his Lordship’s opinion was all. The statute was the code for determining entitlement and there was nothing in the statute which said that entitlement depended upon anything other than being the inventor. In particular, in proceedings in which neither side was challenging the validity of the patent, there was no justification for requiring an applicant in a claim to entitlement to plead and prove allegations which were relevant only to the question of validity. The Markem case was wrongly decided. The first set of amendments was unnecessary. His Lordship also had difficulty with the notion that a claim to sole entitlement was a “new claim” different in kind from part ownership. Once the reference had been made, the Comptroller was seised of the statutory question and, unless the reference was withdrawn, he must determine it. Thus the question whether a claim to full entitlement was a new or different claim was irrelevant. The true question was whether amendment of the statement of facts would make the reference a new reference. In his Lordship’s view, it plainly would not.
LORD PHILLIPS, LORD WALKER, LORD MANCE and LORD NEUBERGER delivered concurring speeches.
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Appearances: Christopher Floyd QC, Tim Powell, solicitor and Kathryn Pickard (Powell Gilbert) for the claimants; Peter Prescott QC and Andrew Lykiardopolous (Bird & Bird) for Rorer; Daniel Alexander QC (Milbank Tweed Hadley & McCloy) for ImClone Systems Inc; Michael Edenborough (Treasury Solicitor) for the Comptroller of Patents Designs and Trademarks.
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