Yeda Research and Development Company Limited (Appellants)v.Rhone-Poulenc Rorer International Holdings Inc and others (Respondents)

Patents Act 1977 section 7 provides an exhaustive code for entitlement to a patent. The starting point is to identify the actual deviser or devisers of the inventive concept. A person claiming through the true inventor need not also plead a contractual, confidential or other personal wrong by the registered proprietor.

The first-to-file principle concerns novelty and validity, rather than entitlement. A timely reference under section 37 remains the same reference when its accompanying statement is amended. The Comptroller has a broad, fairness-based discretion to permit such an amendment, including one enlarging a claim from joint to sole proprietorship.

Yeda, the assignee of rights said to arise from research at the Weizmann Institute, claimed entitlement to a European patent granted to Rorer for combined cancer treatment using a monoclonal antibody and an anti-neoplastic drug. Its original reference sought joint proprietorship and named the Weizmann scientists as co-inventors.

After the decision in Markem Corp v Zipher Ltd [2005] RPC 31, Yeda sought to amend its statement to plead confidence and employment matters and to claim sole, rather than joint, proprietorship. The Comptroller allowed the amendments. Lewison J disallowed them, and the Court of Appeal affirmed that decision in [2006] EWCA Civ 1094.

The House considered whether inventorship alone could found an entitlement claim and whether, after the two-year period in section 37(5), the statement could be amended to enlarge the extent of the entitlement claimed.

1. Appeal allowed unanimously. Lord Hoffmann gave the leading speech. Lord Phillips, Lord Walker, Lord Mance and Lord Neuberger agreed. The House restored the Hearing Officer’s decisions permitting both amendments.
2. Entitlement. Per Lord Hoffmann, Patents Act 1977 section 7(2), read with section 7(3), is an exhaustive code identifying those entitled to a patent. The inquiry begins by identifying the actual deviser or devisers of the inventive concept. A contribution to the wording or integers of a claim is insufficient unless it contributed to that concept. A person claiming joint inventorship must prove such a contribution. A person seeking substitution as sole inventor must also displace the statutory presumption favouring the applicant.
3. No additional wrong is required. The broad proposition in Markem Corp v Zipher Ltd [2005] RPC 31, that every entitlement claimant must invoke a further rule of law such as contract or confidence, was wrong. A true inventor, or a successor in title, need not establish a personal cause of action against the registered proprietor. Markem itself was correctly decided because, on its facts, the former employer neither invented the relevant concept nor had a rule of law or agreement conferring title to the employee’s later invention.
4. Validity distinguished from entitlement. The first-to-file principle derives from novelty rules, including section 2(3), and does not decide title to an already granted patent. Confidentiality may affect whether a disclosure destroys novelty, but it does not ordinarily supply the basis of an inventor’s entitlement claim. Lord Hoffmann added that equitable proprietary estoppel may nevertheless provide a complete or partial defence concerning patent property.
5. Amendment. A section 37 proceeding is commenced by a statutory reference, not by a CPR claim form asserting a cause of action. Once a timely reference has placed the statutory entitlement question before the Comptroller, amendment of its accompanying factual statement from partial to full entitlement does not create a new, time-barred reference. Rule 100 of the Patents Rules 1955 gives a broad discretion to allow amendment where fair and just. Per Lord Neuberger, actual prejudice reasonably suffered by a licensee could be relevant in another case, but no such evidence existed here.

• House of Lords: Allowed Yeda’s appeal and restored the Hearing Officer’s decisions allowing the amendments.
• Court of Appeal: Affirmed Lewison J’s decision disallowing the amendments: [2006] EWCA Civ 1094.
• Comptroller: The Hearing Officer had allowed Yeda to amend its statement of case to plead further matters and to claim sole proprietorship.