Yeda Research v Rhone-Poulenc Rorer [2007] UKHL 43

The House of Lords has ruled definitively on the law on patent entitlement, in the process overturning the Court of Appeal's approach to in Markem v Zipher [2005] RPC 31. 

A patent for a cancer treatment was granted naming as inventors scientists at the Weizmann Institute of Science, with Yeda Research (‘Yeda’) named as proprietor by virtue of an assignment. The Weizman research utilised types of antibody supplied by Professor Schlessinger, who was on sabbatical leave from Weizmann and working with a company who later became part of Rhone-Poulenc Rorer (‘Rorer’).  On completion of their work, the Weizmann scientists sent an unpublished article describing the invention to Professor Schlessinger.  Rorer then applied for a European patent to cover the invention which was granted in March 2002.

Yeda applied to the Patent Office to be named as joint proprietors. Yeda filed papers within the time limit for bringing entitlement proceedings in respect of a granted patent (two years from grant).  During the course of the subsequent proceedings, Yeda later sought to amend its claim and asked to be named as sole proprietor.  The request to amend the claim was made outside the two year time limit.

Two questions were therefore put before the House of Lords in this case:

1.       What does a person have to prove when claiming entitlement to another's patent?

2.       Could the claim for joint ownership be amended to a claim for sole ownership given that the request for amendment was made after the two year time limit for bringing the entitlement action had expired?

Addressing question 1, the Lords considered the approach taken by the Court of Appeal in the Markem case, in which it was decided that a person (A) who claims to be entitled to a patent which has been granted to someone else (B) could not succeed merely by proving that he had been the inventor and that B had not, and instead stated that:

"[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone.  It follows that A must invoke some other rule of law to establish his entitlement - that which gives him title, wholly or in part, to B's application".