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

Factual and Procedural Background

The case concerns a patent relating to therapeutic compositions combining monoclonal antibodies specific to a human epidermal growth factor receptor with anti-neoplastic drugs. The patent was granted and published in the European Patent Bulletin on 27 March 2002. A reference was made to the Comptroller of Patents under section 37 of the Patents Act 1977 on 26 March 2004, claiming joint ownership of the patent. Subsequently, the referrer ("Company A") amended the claim to assert sole ownership, based on arguments that the named inventors' contribution was insufficient to entitle them to proprietary interest, or alternatively, that the inventors were employees of an academic institution whose rights had been assigned to Company A.

The registered proprietor ("Company B") and a licensee ("Company C") objected to these amendments on the basis that they were made out of time, invoking the two-year limitation period under section 37(5) of the Patents Act 1977. The Hearing Officer allowed the amendments, exercising discretion not bound by CPR rule 17.4 criteria. Company B and Company C appealed this decision.

Legal Issues Presented

1. Whether section 37(5) of the Patents Act 1977 constitutes a limitation period barring claims to entitlement made after two years from the date of patent grant.
2. Whether an amendment to a reference under section 37 to change a claim from joint ownership to sole ownership constitutes a new claim barred by the limitation period.
3. Whether the Civil Procedure Rules (CPR) Part 17.4 apply to proceedings before the Comptroller of Patents regarding amendments.
4. The scope of the Comptroller’s jurisdiction under section 37 and whether it extends to a roving inquiry beyond the pleaded dispute.
5. The effect of amendments made outside the limitation period, specifically whether such amendments "relate back" to the date of the original reference.

Arguments of the Parties

Appellant's Arguments (Company B and Company C)

• Section 37(5) imposes a strict two-year limitation period for claims to entitlement to a patent.
• A claim to sole ownership, distinct from joint ownership, should be treated as a new claim and thus barred if made after the limitation period.
• The Hearing Officer should have applied the criteria in CPR 17.4 when considering amendments that introduce new claims after a limitation period.
• Allowing the amendments would defeat the limitation defence and undermine legal certainty.

Respondent's Arguments (Company A and Comptroller)

• The CPR do not apply to proceedings before the Comptroller as it is a separate tribunal with its own procedural rules.
• The Comptroller has a broad discretion under rule 100 of the Patents Rules to allow amendments, including to rule 54 statements.
• The amendments should be allowed as they fall within the Comptroller’s jurisdiction and the limitation period does not bar such amendments or claims.
• The amendments, if allowed, should relate back to the date of the original reference, preserving the claim’s timeliness.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Parsons v. George [2004] 1 WLR 3264	Interpretation of CPR 17.4 and limitation periods; balancing interests in amendments after limitation expiry.	Supported the interpretation that CPR 17.4 applies only where statutes allow amendments after limitation periods; underlying principles guide tribunals.
Ketteman v Hansel Properties Ltd [1987] AC 189	Effect of amendments relating to new parties after expiry of limitation period; rejection of "relation back" theory.	Held amendments adding new claims take effect from amendment date, not relating back; protecting limitation defences.
Banks v. CBS Songs Ltd [1992] FSR 278	Endorsement of Ketteman’s rejection of relation back for new claims/amendments.	Cited to reinforce principle that amendments do not defeat limitation defences by relating back.
Boake Allen Ltd v Revenue and Customs Commissioners [2006] EWCA Civ 25	Importance of proper pleadings to define issues and avoid unfair surprise; limits on departure from pleadings.	Supported the principle that proceedings must be confined to pleaded cases; no roving inquiries.
Foskett v. McKeown [2001] 1 AC 102	Distinction between discretionary remedies and determination of property rights.	Used to clarify that initial determination of ownership is not discretionary and requires natural justice.
Markem Corporation v Zipher Ltd [2005] EWCA Civ 267	Public interest in removing invalid patents quickly; coherence of international and domestic patent law provisions.	Referenced to support interpretation of limitation periods consistent with international law and legal certainty.
Hoechst UK Ltd v Inland Revenue [2004] STC 1486	Starting point for considering amendment criteria under CPR 17.4.	Considered by the Hearing Officer in evaluating whether amended claims constituted new claims requiring new investigations.
Langley v. North West Water Authority [1981] 3 All ER 610	Tribunal’s inherent power to regulate procedure and allow amendments.	Recognized but held that express powers under Patents Rules govern amendment powers.
Pharmedica GMBH's Trade Mark Application [2000] RPC 536	Substitution of parties in opposition proceedings; distinction between substitution and amendment.	Rejected as authority for allowing new claims by amendment after limitation period.
Loveridge v. Healey [2004] EWCA Civ 173	Necessity of proper pleadings and consequences of departure from pleadings.	Supported the principle that parties should not be taken by surprise by unpleaded claims.
Cobbold v. London Borough of Greenwich	General approach to permission to amend pleadings where no limitation defence arises.	Distinguished as not applying where a limitation defence is present.
Lloyds Bank plc v. Rogers [1999] 3 EGLR 83	Definition of new claim and cause of action in limitation context.	Applied to distinguish different factual bases as separate causes of action constituting new claims.
Aldi Stores Ltd v. Holmes Buildings plc [2003] EWCA Civ 1882	Approval of Lloyds Bank analysis on new claims.	Confirmed that new factual bases constitute new claims for limitation purposes.
St Trudo Trade Mark [1995] RPC 370	Application of civil evidence rules to tribunal proceedings and comparison with court procedures.	Considered in argument about procedural rules but distinguished due to different rule-making powers.
R v. Comptroller-General of Patents Designs and Trademarks ex p Ash & Lacey Building Products Ltd [2002] RPC 46	Role of Comptroller as judge in revocation proceedings; distinction from prosecutor.	Emphasized that Comptroller’s role is adjudicatory, particularly in entitlement disputes.

Court's Reasoning and Analysis

The court began by examining the statutory framework, particularly section 37 of the Patents Act 1977 and its relationship to Article 23 of the Community Patents Convention (CPC). It concluded that section 37(5) constitutes a substantive limitation period designed to promote legal certainty by barring entitlement claims made more than two years after the patent grant, unless the proprietor knew at the time of grant that he was not entitled.

The court analyzed the nature of a reference under section 37, emphasizing that the Comptroller's jurisdiction is triggered by a formulated dispute raised in a rule 54 statement, which must set out the question, facts, and orders sought. The Comptroller's role is judicial, not inquisitorial, and must respect natural justice, including fair notice of the claims.

The court rejected the argument that CPR Part 17.4 applies to Patent Office proceedings, noting that the CPR do not govern Patent Office procedure and that the Comptroller’s powers are governed by the Patents Rules. However, the court acknowledged that principles underlying CPR 17.4—such as not permitting amendments that defeat clear limitation defences—should inform the exercise of discretion.

Regarding the effect of amendments, the court referred to authority rejecting the "relation back" theory for amendments introducing new claims or parties after expiry of limitation periods. It held that amendments adding new claims take effect from the date made and do not relate back, preserving limitation defences.

The court identified that a claim to sole ownership is a new claim distinct from joint ownership, involving different facts and legal bases. The amended claims in this case introduced new factual allegations and legal grounds, constituting new causes of action barred by the limitation period.

Consequently, allowing these amendments would defeat the limitation defence and undermine legal certainty, which is a key policy underpinning the limitation period. The court found no support for the argument that the Comptroller has a roving jurisdiction to decide ownership issues beyond the scope of the pleaded dispute.

Finally, the court found that the Hearing Officer erred in allowing the amendments without applying the correct legal principles regarding limitation and the effect of amendments. Although the Hearing Officer was correct that CPR 17.4 did not apply directly, the underlying principles should have led to refusal of the amendments.

Holding and Implications

The court held that the Hearing Officer's decision to allow the amendments was WRONG and allowed the appeal.

The direct effect of this decision is that the amendments asserting sole ownership made after the two-year limitation period under section 37(5) are barred and cannot be allowed to stand. The limitation defence of the registered proprietor remains available. No new precedent was established beyond clarifying the application of limitation periods and amendment principles in Patent Office entitlement proceedings.