House of Lords clarifies rules of law and procedure in patent entitlement disputes

In the recent decision of Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and Another, the House of Lords overturned the broad principle established in Markem Corporation v Zipher Ltd (2005) that any claim of entitlement to a patent (including by someone claiming to be the true inventor) must be based upon ‘some other rule of law’, for instance, breach of contract or confidentiality. The only determination for the Court to make is to decide who was the inventor of the claimed invention. The decision also clarified the procedure relating to amending an entitlement claim, specifically how the limitation period applies to an application for amendment.

The Case

The case arose from a dispute between Yeda and Rorer as to the ownership of a patent for a cancer treatment based on a combination of certain chemicals. The European patent was granted to Rorer in 2002. In 2004 Yeda, claiming that Rorer did not make the invention which formed the basis of the patent, made a reference under s.37(1) of the Patents Act 1977 seeking an order that the patent be transferred into the joint ownership of Yeda and Rorer. Yeda asserted that it was the assignee of the rights of the true inventors. Then in 2005, the Court of Appeal gave judgement in Markem Corporation v Zipher Ltd (2005) establishing the principle that any claim of entitlement to a patent (including by someone claiming to be the true inventor) must be based upon ‘some other rule of law’.

Yeda decided to amend the reference they had made so that it would comply with the Markem requirement. They also decided to add references alleging that the scientists from Weizmann Institute of Science in Israel, the rights of whom Yeda was assignee, were the sole inventors and that as such the patent should be transferred to Yeda’s sole name. To further complicate matters, by the time the application to amend the reference was completed, the limitation period of two years from grant of the patent (set out in s.37(5) of the Patents Act 1977) had expired.

After several appeals, the House of Lords had two main questions to answer. Firstly, what must a person prove when claiming an entitlement to a patent granted to someone else? Must that person also allege, as Markem established, that the proprietor of the patent only obtained ownership through the breach of some other rule of law. The second question was: when a reference claiming joint entitlement has been made, can that reference be amended so as to claim sole entitlement after the two year limitation period in s.37(5) has expired. The alternative being that such a reference is considered new and separate and therefore barred for being outside the limitation period.

The Lords’ Ruling

The Lords allowed Yeda’s appeal, addressing the two questions as follows:

• The Patents Act 1977 provides an exhaustive code for determining who was entitled to the grant of a patent. The first step when such a determination is disputed is to decide who was the inventor of the claimed invention. A person seeking to be added as joint inventor bears the burden of proving that he contributed to the inventive concept behind the claimed invention. A person going further and seeking to be substituted (as in this case) as sole inventor bears the additional burden of proving that the inventor named in the patent did not contribute to the inventive concept. In the judge’s opinion this is all that needs to be shown, there being no justification for importing questions of whether one party has some personal cause of action against the other. The court was satisfied that Yeda had met the burden of proof required to have the Weizmann scientists substituted as sole inventors. The overruling of the Markem principle simply meant that Yeda’s first set of amendments to their application were unnecessary.
• The procedural question turned on whether or not the claim of sole entitlement was a new cause of action and thus barred by the expiry of the limitation period. Once the question of entitlement is before the comptroller, the comptroller has jurisdiction to determine that question based on the relative contributions of the parties to the invention (Rule 100 of the Patent Rules 1995). This would have been the case even if Yeda had not amended the pertinent part of their application. To put it more simply, once the reference had been made, unless it was then withdrawn, the comptroller had to determine it. The question of whether a claim to full entitlement was new or distinct from the previous claim was irrelevant.

Click here to see the full House of Lords judgement.

Comment

This unanimous decision marks a welcome end to the controversy and confusion involved in bringing patent entitlement proceedings. Specifically clarifying what a party needs to show during such a claim and dispensing with the Markem requirement, for which there was no proper basis, will be seen as a positive step. This does though mean that any party bringing entitlement proceedings will have to focus on addressing the perhaps more complex issues surrounding the concepts of the invention and the inventor.