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

Section 37(5) of the Patents Act 1977 creates a substantive two-year limitation period for claims concerning entitlement to a granted patent. It bars an out-of-time new claim, rather than merely restricting the remedy available. A reference under section 37 is a formulated dispute between the parties, not a roving inquiry into ownership. The Civil Procedure Rules do not govern Patent Office proceedings, although their underlying principles may sometimes inform the exercise of powers under the Patents Rules 1995. An amendment introducing a new party, cause of action, or distinct claim does not relate back unless the relevant legislation provides for relation back. Where limitation is a clear defence, amendment should be refused; where it is arguable, the new claim should ordinarily be brought in fresh proceedings.

Yeda referred questions of entitlement to a patent to the Comptroller under section 37 of the Patents Act 1977, initially seeking joint ownership and related relief. After the two-year period following publication of the grant had expired, Yeda amended its rule 54 statement to claim sole ownership, invalidity of the grant to the registered proprietor, transfer of rights, and alternative claims based on inventorship, breach of confidence and employment rights.

The Hearing Officer permitted the amendments, treating section 37(5) as a limitation period but deciding that the criteria in CPR 17.4 did not apply and that he had a discretion to permit the amendments. The registered proprietor and licensee appealed. The central issues were whether section 37(5) barred the new claims, whether the amendments related back, what procedural power governed amendment, and whether the new claims were sufficiently distinct to be time-barred.

1. Appeal allowed. The Hearing Officer’s decision was wrong within the meaning of CPR 52.11(3). The amendments should not have been permitted.

2. A reference under section 37 is a formulated dispute identified in the rule 54 statement. The Comptroller must determine the question referred, subject to natural justice, and is not entitled to undertake a roving inquiry or determine a materially different proprietary claim without notice. The power to make an appropriate order under section 37(2) arises only after identifying the question to be determined.

3. Section 37(5), read with section 130(7), gives effect to article 23 of the Community Patents Convention and is properly regarded as a limitation period. It bars the making of a claim after two years, not merely the making of an order transferring the patent. The statutory scheme and the policy of legal certainty do not permit an out-of-time new claim to be introduced into an existing reference.

4. The CPR do not apply to Patent Office proceedings. The relevant express power to amend a rule 54 statement is rule 100 of the Patents Rules 1995. The Comptroller may adopt the underlying principles of court practice, but must not treat CPR 17.4 as binding or use an inherent power to bypass statutory or rule-based constraints.

5. Absent statutory provision, an amendment introducing a new party or cause of action takes effect when made and does not relate back. Section 37(5) is not a provision permitting relation back. The policy choice embodied in article 23 is legal certainty. An amendment reflecting a devolution of title during proceedings might stand differently, but that was not the present case.

6. A claim to sole ownership and a claim to joint ownership are different claims. Claims based on different factual and legal bases, such as inventorship, employment rights or breach of confidence, are also separate claims. The amended claims were therefore new claims and the limitation defence remained available. Even if the defence were only arguable, the proper course was to require the claims to be advanced in fresh proceedings.

1. High Court (Chancery Division) — Mr Justice Lewison allowed the appeal from the Hearing Officer’s decision permitting amendments to the rule 54 statement.