Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings Inc & Ors

Factual and Procedural Background

Researchers at The University investigated cancer treatments that combined monoclonal antibodies (cytostatic) with anti-neoplastic drugs (cytotoxic). In 1988 these researchers discovered that an unconjugated mixture of the two agents worked synergistically. A draft article describing the findings was sent, in confidence, to Researcher A, then on sabbatical at laboratories owned by Company B.

Before the article was published, Company B filed a United States patent naming Researcher A and colleagues as inventors and later filed a European patent (designating the United Kingdom) claiming priority from the US application.

Company A, the technology-transfer company for The University, asserted that the inventive concept was devised solely at The University. On 26 March 2004 it referred the matter to the Comptroller under sections 37(1)(a) and (c) of the Patents Act 1977, initially seeking to be registered as a joint proprietor and to have three university researchers named as co-inventors.

After the Court of Appeal’s decision in Markem Corp v Zipher Ltd [2005] RPC 31, and after re-evaluating inventorship, Company A applied to amend its statement to (i) plead breach of confidence and employment issues, and (ii) claim sole entitlement to the patent. The Comptroller allowed the amendments. Judge Lewison reversed that decision and the Court of Appeal affirmed. The present appeal is from the House of Lords, where the amendments and underlying legal questions were reconsidered.

Legal Issues Presented

1. In entitlement proceedings under sections 7 and 37 of the Patents Act 1977, must a claimant establish an additional “rule of law” (e.g., breach of contract or confidence) beyond demonstrating that it is the true inventor?
2. Does an amendment, filed after the two-year limitation period in section 37(5), that enlarges a claim from joint to sole proprietorship amount to a new, time-barred reference, or can it be permitted under the Comptroller’s procedural powers?

Arguments of the Parties

Company A’s Arguments

• The inventive concept originated entirely with The University; Researcher A merely supplied antibodies and did not contribute to the invention.
• Sections 7(2) and 7(3) form an exhaustive code: proving inventorship alone suffices for entitlement; no additional cause of action is required.
• The Comptroller’s broad power under Rule 100 allows post-limitation amendments because the original reference placed entitlement in issue within time.

Company B’s Arguments

• Relying on Markem, entitlement can be transferred only if the claimant pleads and proves breach of confidence, contract, or similar wrongdoing.
• Amending from joint to sole entitlement constitutes a new claim after the two-year period and is therefore statute-barred.
• Substituting a sole proprietor would unfairly prejudice existing licensees whose licences would lapse under section 38.

Table of Precedents Cited

Court's Reasoning and Analysis

1. Statutory framework. Sections 7 and 37 of the Patents Act 1977 constitute a complete code for determining ownership. Section 7(2) restricts entitlement to (a) the inventor, (b) persons deriving title under specified rules (e.g., employment), or (c) successors in title. The phrase “and to no other person” confirms exhaustiveness.

2. Inventorship as the decisive criterion. The Court held that the “actual deviser” (section 7(3)) is the person who formulated the inventive concept. If the claimant proves inventorship, no further allegation of breach of confidence or contract is required. Equitable defences (e.g., proprietary estoppel) might still bar relief, but they do not affect the claimant’s initial burden.

3. Misinterpretation of Markem. The Court analysed Markem and concluded that its broad dictum conflated entitlement with validity. The “first-to-file” rule affects novelty (section 2), not ownership. Thus, requiring an additional “rule of law” would improperly import validity considerations into entitlement proceedings.

4. Procedural amendment. A reference under section 37 is made when Form 2/77 is filed; thereafter the Comptroller is seised of the statutory question. Rule 100 permits amendments to accompanying statements. Enlarging a claim from joint to sole ownership does not create a new reference; the original reference suffices because the fundamental question—who is the true proprietor—remains unchanged.

5. Discretion and prejudice. The Hearing Officer had wide discretion to allow amendments and found no concrete prejudice to Company B or its licensees. The Court affirmed that discretion, noting that licence-related concerns could be managed through equitable considerations in individual cases.

Holding and Implications

HOLDING: The appeal is ALLOWED; the Hearing Officer’s decision permitting both sets of amendments is RESTORED.

Implications: The judgment clarifies that:

• In entitlement disputes, proving inventorship alone satisfies section 7; additional causes of action are unnecessary.
• The broad dictum in Markem is overruled to the extent it suggested otherwise.
• Amendments enlarging the scope of relief after the limitation period may be allowed because they do not constitute a fresh reference.
• The decision provides guidance on the Comptroller’s discretion and the separation between entitlement and validity under UK patent law.