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Lords verdict 'simplifies patent disputes'

A landmark House of Lords ruling changes the course of action creative types must take if they wish to be added as a joint or co-inventor of a patented product.

Ruling last month, Britain’s highest court confirmed a person who seeks to be listed as joint inventor must prove that they contributed to the inventive concept of the claimed invention.

But in cases like Yeda Research V Rhone-Poulnec Rorer, where an application was made to replace the sole inventor, the claimant (Yeda) must prove that the listed inventor did not contribute to the inventive concept.

Roger Sinclair, legal consultant at Egos Ltd, a contract and commercial law specilaist, said: " This case reaffirms the principle that in deciding a dispute over ownership of a patent, the first thing to be decided is, 'who actually invented it?'"

Alastair Shaw, a lawyer at Lovells, told ManagingIP that the ruling would have an impact on some current litigation.

He said the decision simplifies the resolution of increasingly common but often complicated and commercially important disputes.

The Lords’ verdict overturns the broad principle laid down in a case heard by the Appeal Court that any claim to entitlement of a patent, even by an inventor, needs proof of a breach of an independent rule of law such as contract.

According to the Lords’ judgement, the patent application was filed in September 1989, published in August 1995 and granted in March 2002.

But under Article 23 of the Community Patent Convention, which is yet to come into force but is the foundation in this area of UK law, parties have only a two-year window to challenge the ownership of the patent.

According to Rhone-Poulnec, owner of the contested patent that covers Erbitux, a drug that fights tumours, Yeda, was therefore outside the time limit and could not attack their ownership.

In July, Appeal judges agreed, saying Yeda’s claim, which was upgraded during the dispute from an application to be co-inventor to sole inventor, should be disallowed.

But the ruling by the House of Lords means that Yeda will be allowed to pursue their claim to the patent, which could prove lucrativ for the research firm given Erbitux has sales of a reported $400million a year. The case will now return to the Court of Appeal.

Nov 21, 2007
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