Yeda Research and Development Co Ltd. v Rhone-Poulenc Rorer International Holdings & Anor

An entitlement claim to sole proprietorship is legally distinct from a claim to joint proprietorship. Section 37(5) of the Patents Act 1977, construed consistently with article 23 of the Community Patent Convention, bars an amendment made after the two-year period if it introduces sole ownership for the first time. A timely sole-ownership claim includes joint ownership as the lesser alternative. The Convention time bar supplements domestic limitation law. It does not displace the Limitation Act 1980. An amendment introducing new causes of action, including breach of confidence or employment rights, may therefore be time-barred even where entitlement proceedings began in time. The UK provision must be read in harmony with the corresponding Convention text although the Community Patent Convention never entered into force. An entitlement claim must also plead a legal basis for the claimant’s right against the current patentee.

Yeda commenced a post-grant entitlement reference concerning a patent held by Rorer. The original reference, begun within two years of grant, sought joint ownership and related inventorship relief. Yeda later sought to amend the reference to claim sole ownership and to rely on additional allegations concerning breach of confidence and employment rights.

Mr R C Kennell, acting for the Comptroller, made the relevant decision on 20 October 2005. Lewison J reversed that decision in his judgment of 16 February 2006, reported at [2006] EWHC 160 Ch and [2006] RPC 24. Yeda appealed. The central issues were whether the amendment introduced a new claim outside the two-year period and whether the Community Patent Convention or domestic limitation law controlled the result.

Disposition. The appeal was dismissed. Jacob LJ gave the first judgment and Keene LJ agreed. Sir Anthony Clarke MR also agreed that the appeal should be dismissed, but expressed substantial doubts about the construction of Articles 23 and 24 of the Community Patent Convention and would not have relied on the pleading point considered by Jacob LJ.

1. Section 130(7) of the Patents Act 1977 requires the specified domestic provisions to have, so far as practicable, the same meaning and effect as their corresponding Convention provisions. That interpretative direction applied even though the Community Patent Convention had never entered into force. The Convention text could be read directly, and the same conclusion followed from treating it as part of the legislative background.
2. Article 23 distinguishes a claim to complete transfer of a patent from a claim to joint proprietorship. A timely claim to sole ownership necessarily includes a claim to joint ownership as an alternative, but a timely claim framed only for joint ownership does not introduce a claim to sole ownership. The proposed amendment therefore added a new sole-ownership claim after expiry of the two-year period and was barred by section 37(5). The Patents Rules 1995 required the Form 2/77 and statement to be read together; their original wording raised only joint ownership.
3. The majority also held that the proposed sole-ownership pleading disclosed no cause of action against Rorer. Following Markem v Zipher, entitlement must arise from breach of a claimant’s right to the invention under a rule of law. Alleging breach of Dr Schlessinger’s duty of confidence did not plead any breach by Rorer or explain a legal link transferring entitlement to Yeda. The MR would not have decided the appeal on that basis.
4. All three judges accepted that the breach of confidence and employment-rights claims were new claims. Article 23 did not override domestic limitation law, and those claims were time-barred under English law. The court expressly left open the validity and limitation of the original joint-ownership claim.
5. For inventorship, the relevant inquiry is who was responsible in substance for the inventive concept. The original pleading did not exclude Dr Schlessinger’s inventive contribution merely because the Weizmann inventors performed practical work.
6. Articles 24.1 and 24.2 reinforced the distinction between complete dispossession and joint ownership. The possibility of a later licence for an ousted proprietor did not remove the legal certainty supplied by the two-year rule.

1. Court of Appeal (Civil Division). Appeal from Lewison J dismissed on 31 July 2006.
2. High Court of Justice, Chancery Division (Patents Court). Lewison J reversed the relevant decision of the Comptroller’s delegate in a judgment dated 16 February 2006, reported at [2006] EWHC 160 Ch and [2006] RPC 24.
3. Patent Office. Mr R C Kennell, Deputy Director acting for the Comptroller, made the relevant decision on 20 October 2005 concerning the allowability of Yeda’s amendments.