In its October 24 decision in Yeda v Rhone-Poulnec Rorer, the Court confirmed that a person who seeks to be added as a joint inventor must prove that he contributed to the inventive concept underlying the claimed invention. Anybody who seeks to be substituted as a sole inventor bears the additional burden of proving that the inventor named in the patent did not contribute to the inventive concept.
Alastair Shaw, a lawyer at Lovells, said that the ruling would have an impact on some current litigation. “This decision simplifies the resolution of these increasingly common but often complicated and commercially important disputes,” he added.
The ruling overturns the broad principle laid down by the Court of Appeal in Markem v Zipher that any claim to entitlement of a patent, even by an inventor, required proof of a breach of an independent rule of law such as contract, or of confidence.
The patent at the centre of the dispute relates to a way of inhibiting the growth of tumour cells. It covers a drug called Erbitux, which is used to treat bowel cancers and is being tested for treatment of other tumours. Sales of the product worldwide top $400 million each year.
The Weizmann Institute of Science in Israel and its licensing wing, Yeda Research & Development Co, argued that its researchers developed the technology that Rhone-Poulnec Rorer subsequently patented and licensed to ImClone.
The patent application was filed in September 1989, published in August 1995 and granted in March 2002.
The dispute began when Yeda claimed that Rhone-Poulnec did not make the discovery which forms the basis of the patent. It argued that it was made at the Weizmann Institute in Israel, and that Yeda, as the assignee of the rights of the Institute’s inventors, is entitled to have the patent transferred to its name.
Yeda originally claimed co-ownership of the patent but during the litigation changed its case to claim sole ownership.
Article 23 of the Community Patent Convention (which has not come into force but provides the foundation for UK law in this area) provides a two-year time limit for other parties to attack the ownership of the patent.
Rhone-Poulnec and ImClone argued that Yeda’s sole ownership claim was made after this two-year limitation period. In a decision on July 31 2006, the Court of Appeal upheld a lower court’s ruling that Yeda’s claim should therefore be disallowed. But the decision by the House of Lords means that Yeda will be allowed to pursue its claim to the patent.
The case will now go back to the Court of Appeal.
If the Weizmann scientists are named as inventors of the patent behind Erbitux, then Yeda will be entitled to have the patent transferred into its name.
Yeda was advised by barrister Christopher Floyd QC and Powell Gilbert. Rhone-Poulenc Rorer and Imclone were represented in court by barristers Peter Prescott QC and Daniel Alexander QC. Bird & Bird advised Rhone-Poulenc and Milbank Tweed Hadley & McCloy acted for Imclone.
