House of Lords
Published October 30, 2007
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International
Holdings Inc and Another
Before Lord Hoffmann, Lord Phillips of Worth Matravers, Lord Walker of
Gestingthorpe, Lord Mance and Lord Neuberger of Abbotsbury
Speeches October 24, 2007
When a reference was made under section 37(1)(a) of the Patents Act 1977 for
joint ownership of a patent and the Comptroller-General of Patents, Designs
and Trademarks was seised of the matter, an amendment to claim sole
ownership of the patent did not amount to the making of a new or different
claim.
The House of Lords so held, allowing an appeal by the claimants, Yeda Research
and Development Co Ltd, from the dismissal by the Court of Appeal (Sir
Anthony Clarke, Master of the Rolls, Lord Justice Keene and Lord Justice
Jacob) ( The Times September 5 2006; [2007] Bus LR 1) of their
appeal from the decision of Mr Justice Lewison in the Patents Court ([2006]
RPC 605) reversing the decision of Mr R. C. Kennell, Deputy Director of the
Patents Office acting for the Comptroller-General of Patents, Designs and
Trademarks, who held that they were entitled to amend a written statement of
case supporting a reference filed on March 26, 2004 for ownership of patent
EP (UK) 0667165 granted to the defendants, Rhone-Poulenc Rorer International
Holdings Inc and Imclone Systems Inc.
Mr Christopher Floyd, QC, Mr Tim Powell, solicitor, and Miss
Kathryn Pickard for Yeda; Mr Peter Prescott, QC and Mr
Andrew Lykiardopolous for Rorer; Mr Daniel Alexander, QC, for
Imclone Systems; Mr Michael Edenborough for the Comptroller,
intervening.
LORD HOFFMANN said that 20 years ago scientists in the department of chemical
immunology at the Weizmann Institute of Science in Israel successfully
combined two different forms of chemical treatment for cancer to obtain a
synthesis which was more effective than either on its own.
They wrote up their results for a scientific journal. Before publication they
sent a draft to a Dr Schlessinger, who had previously worked at the Weizmann
but was on sabbatical leave working for the Meloy Laboratories in
Springfield, Virginia. Meloy afterwards became part of the group of which
Rorer was the holding company.
On September 15, 1988, after Dr Schlessinger had received the draft article
but before it was published, Rorer applied for a US patent for the
combination. Dr Schlessinger and members of his team were named as the
inventors.
On September 15, 1989 they applied for a European patent, with the United
Kingdom as one of the designated contracting states. That was granted on
March 27, 2002, taking priority from the date on which the application for
the US patent was filed.
Yeda, an Israeli company, claimed that Rorer did not make the discovery which
formed the basis of the patent. Yeda said it was made at the Weizmann, and
that Yeda, as assignee of the rights of the inventors, was entitled to have
the patent transferred into its name.
On March 26, 2004 Yeda made a reference under section 37(1) of the 1977 Act
seeking orders that the patent be transferred into the co-ownership of Yeda
and Rorer and amended to name the Weizmann scientists as co-inventors.
After that, the Court of Appeal gave judgment in Markem Corporation v
Zipher Ltd ([2005] RPC 761) that A, who claimed to be entitled to a
patent which had been granted to B, could not succeed merely by proving that
he had been the inventor and not B. A had to be able to show that in some
way B was not entitled to apply for the patent. A had to invoke some other
rule of law to establish his entitlement to title of B’s application.
Yeda also decided that it had been overgenerous in accepting that Dr
Schlessinger and his team had been co-inventors.
In compliance with the Markem ruling, Yeda added references alleging
that the Weizmann scientists were the sole inventors and the patent should
be transferred into Yeda’s name. By the time the application for the
amendment was made the two-year limitation period in section 37(5) had
expired.
The first question was: what did a person claiming entitlement to a patent in
someone else’s name have to prove? Was it enough that he was the inventor
and the registered proprietor was not, or must he allege that the registered
proprietor had procured registration by a breach of some other rule of law.
The second question was: when the referrer had claimed joint entitlement,
could he be allowed to claim sole entitlement after the two-year period in
section 37(5) had expired? Or did that require a new reference which would
be statute-barred?
The first step in any dispute over entitlement was to decide who the inventor
was. Only when that 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 was all. The principle laid down in Markem and applied by the
Court of Appeal in the present case was wrong.
The “first to file” rule was about validity, not about entitlement and it
could only cause confusion to muddle them up as the Court of Appeal did in Markem.
If A claimed that his inventive concept had been patented by B, the
following might have happened: (i) B independently arrived at the same
invention. In that case B was entitled to the patent and A could not apply
to patent the same idea. (ii) A communicated the information about the
inventive concept to B without imposing any duty of confidence. In that case
the information would have been communicated to the public and B’s patent
would be invalid for lack of novelty. (iii) A communicated the information
to B in strict confidence. In that case the patent would be valid and A
could claim entitlement. A was entitled because he was the inventor and not
because B made his application in breach of confidence. The duty of
confidence went to the question of validity and not to the question of
entitlement.
If Rorer had not applied for the patent before the publication of the article,
that would have made the invention unpatentable. The same objection on
ground of lack of novelty would have applied if the draft had been sent to
Dr Schlessinger without imposing any express or implied duty of confidence.
And it was in general true that unless the information was communicated in
confidence, there would not be a valid patent over which to argue. But that
did not make the rules about validity part of the law of entitlement.
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 first set of Yeda’s
amendments were therefore unnecessary.
Once the reference had been made, the comptroller was seised of the statutory
question and, unless the reference was withdrawn, he had to determine it.
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.
Solicitors: Powell Gilbert; Bird & Bird; Milbank Tweed Hadley &
McCloy LLP; Treasury Solicitor.
