The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the pleadings.
Held: The ‘first to file’ rule is a rule about validity, not about entitlement. The House did not accept the notion that a claim to sole entitlement is a ‘new claim’, different in kind from part ownership. The amendments may have been unnecessary in part but should have been allowed as on first hearing. The first step was to identify the inventor. If it was sought to add a name, that person must show a contribution. If a new person claimed sole rights it was for them to show the identified inventor made no contribution.
Lord Walker described the property right which comes into existence the moment the invention is made and before an application is made as a sort of inchoate property right.
Lord Hoffmann, Lord Phillips of Worth Matravers, Lord Walker of Gestingthorpe, Lord Mance, Lord Neuberger of Abbotsbury
[2007] UKHL 43, Times 30-Oct-2007
Bailii
Patents Act 1977 37
England and Wales
Citing:
Cited – IDA Ltd and others v University of Southampton and others; University of Southampton’s Applications Patc 28-Jul-2004
Disclosure and enablement are distinct concepts in patents law, each of which has to be satisfied and each of which has its own rules. As to sufficiency: ‘In my view, devising an invention and providing enabling disclosure are two quite different . .
Part Criticised – Markem Corporation and Another v Zipher Ltd CA 22-Mar-2005
A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s . .
Cited – Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office ChD 1997
Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must . .
At First Instance – Rhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of . .
Appeal from – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Cited – Synthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .
See Also – Regina v Coutts HL 19-Jul-2006
The defendant was convicted of murder. Evidence during the trial suggested a possibility of manslaughter, but neither the defence nor prosecution proposed the alternate verdict. The defendant now appealed saying that the judge had an independent . .
Cited by:
Cited – Thaler v Comptroller General of Patents Trade Marks and Designs CA 21-Sep-2021
Inventor Must be a Person to apply for Patent
The case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions – correct processing of application
Held: The appeal failed. On the face of the Form 7s he filed, Dr Thaler did not comply with . .
Lists of cited by and citing cases may be incomplete.
Updated: 22 September 2021; Ref: scu.260316
