House of Lords Refines UK Law in Patent Entitlement Proceedings

On October 24, 2007, the Law Lords released their decision in Yeda Research and Development Company Limited v Rhone Poulenc Rorer International Holdings Inc et al [2007] UKHL 43, redefining the requirements to establish claims to entitlement to a patent flowing from the facts surrounding the inventorship and contribution to the invention. In so doing, the five Law Lords unanimously overruled a 2005 judgment of the English Court of Appeal (Markem Corp v Zipher Ltd [2005] RPC 31). Scientists at an Israeli institute (WIS) wrote up results of research in the form of a draft article for publication. Before publication, they sent the draft to Prof S who had worked at WIS previously but was then on sabbatical leave in the US, working for an employer whose rights were later acquired by R. After Prof S received the article and before it was published, R applied for a US patent (1988) and R later (1989) filed for a European patent taking priority from the US patent. Y, as a successor to the rights of WIS, filed for a reference in the UK asking for relief by which it would become a joint proprietor, with R, of the patent. In the administrative proceedings, Y was permitted to make two amendments to the application, but this decision was reversed on appeal. On appeal to the House of Lords, the appeal was allowed. The first of the two amendments sought by Y was to include an allegation not just that Y is the true owner of the patent, but that the registered owner, R, had procured the registration by a breach of some other rule of law (such as, for example, breach of contract or breach of confidence). This was consistent with the general understanding of the effect of the Markem case. However, Lord Hoffmann, in reasons concurred by the other Law Lords on this point, found that no allegation of unlawful activity by the registered owner was necessary. The mistaken view in Markem arose, said Lord Hoffmann, by confusion between the distinct concepts of entitlement to a patent and its validity. On the facts of this case, there was no challenge by either side to the validity of the patent. The challenge was solely to entitlement, and allegations of breach of the law of contract and confidentiality would be relevant only to allegations of invalidity. As a result, the first application for amendment was unnecessary. The second of the two amendments sought was to permit a "late" claim by Y for sole ownership of the patent, as opposed to the joint ownership first applied for. For complex reasons deriving from UK and EU statutory and administrative law, Lord Hoffmann found that such a "late" application was not untimely. As a result, Y's application was permitted to proceed. For further information, see: http://tinyurl.com/3x98yg For the full-text reasons in the Yeda Research case, visit: http://tinyurl.com/33ujug Summary by: Lauren Lodenquai