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

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

A claim to sole ownership of a patent, first introduced by amendment after the expiry of the two-year limitation period under s.37(5) Patents Act 1977 (implementing Art. 23 CPC), is barred. The original pleadings did not encompass a claim to sole ownership, and the proposed amendment did not disclose a valid cause of action against Rorer. National limitation law applies to new causes of action raised by amendment. The appeal is dismissed.

Parties
Appellant: Yeda Research and Development Co Ltd; First Respondent: Rhone-Poulenc Rorer International Holdings Inc; Second Respondent: ImClone Systems Inc; Intervener: The Comptroller of Patents Designs and Trademarks
Jurisdiction
England and Wales
Judgment Date
31 July 2006
Procedural Posture
Civil Appeal (entitlement to Patent) / Appeal From High Court (chancery Division, Patents Court) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Patent Entitlement, Limitation Periods, Amendment of Pleadings, Community Patent Convention Interpretation
Intellectual Property Law Patent Entitlement Limitation Periods Amendment of Pleadings Community Patent Convention Interpretation

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Parties

Yeda Research and Development Co Ltd

Appellant

Rhone-Poulenc Rorer International Holdings Inc

First Respondent

ImClone Systems Inc

Second Respondent

The Comptroller of Patents Designs and Trademarks

Intervener

Procedural Posture

Civil Appeal (entitlement to Patent) / Appeal From High Court (chancery Division, Patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether a claim to sole ownership of a patent can be introduced by amendment after the expiry of the two-year limitation period under s.37(5) of the Patents Act 1977 (implementing Art. 23 of the Community Patent Convention)
  2. 2 Whether the proposed amendment discloses a valid cause of action against the patentee (Rorer) for sole ownership
  3. 3 Whether national limitation law applies to new causes of action raised by amendment in entitlement proceedings

Ratio Decidendi

A claim to sole ownership of a patent, first introduced by amendment after the expiry of the two-year limitation period under s.37(5) Patents Act 1977 (implementing Art. 23 CPC), is barred. The original pleadings did not encompass a claim to sole ownership, and the proposed amendment did not disclose a valid cause of action against Rorer. National limitation law applies to new causes of action raised by amendment. The appeal is dismissed.

Court Disposition

Appeal dismissed