Yeda Research and Development Company Limited (Appellants)
v. Rhone-Poulenc Rorer International Holdings Inc and others (Respondents)
63. In my opinion Jacob LJ's reference to the law of confidence as a typical example of "a rule of law" operating under section 7(2)(b) to displace the claim of an inventor under section 7(2)(a) does not really stand up to scrutiny. Breach of confidence may well be part of the narrative in explaining why one person, rather than another, came to be the applicant for, or grantee of, a patent. It may provide a period of grace in relation to publication. But it will not normally (and Jacob LJ was speaking of "the usual run of case") operate under a rule of law to oust the primary claim of the true inventor.
64. I have had the benefit of reading in draft the opinions of my noble and learned friends, Lord Hoffmann, Lord Walker of Gestingthorpe and Lord Neuberger of Abbotsbury. For the reasons given by Lord Hoffmann, I agree that the appeal should be allowed and the decisions of the hearing officer to allow the amendments restored.
65. I also agree with the supplementary observations made by Lord Walker and by Lord Neuberger in their opinions.
LORD NEUBERGER OF ABBOTSBURY
66. I have had the privilege of reading in draft the speeches of my noble and learned friends, Lord Hoffmann and Lord Walker of Gestingthorpe. For the reasons they give, I agree that this appeal should be allowed and the decision of the Hearing Officer restored. However, there are two additional points which I should like to deal with.
67. The first point concerns the substantive issue identified by Lord Hoffmann in paragraph 16. It arises from an argument relied on by the respondent, Rorer, to support the Court of Appeal's conclusion, based on paragraph 79 of Markem Corp v Zipher Ltd  RPC 31, that it was necessary for the appellant, Yeda, to "invoke some other rule of law to establish [its] entitlement" to be registered as proprietor of the patent in suit under section 37(1) of the 1977 Act. Rorer's argument is that, if this were not the law, it would lead to anomalies or difficulties in a case where there were independent inventors.
68. Thus, (assuming Yeda's proposed amended claim is otherwise justified), if a third party had independently made the claimed invention, it is said that, unless the approach in Markem is correct, both Yeda and the third party could apply to be registered in place of Rorer, under section 37(1)(a), as each of them could fairly claim to be an "inventor" under section 7(2)(a), and there would be no basis for choosing between them. It is further pointed out by Rorer that this problem would be avoided if what was said in paragraph 79 of Markem was correct, because only Yeda, and not the third party, could allege that Dr Schlessinger or Rorer was in breach of some right of the sort envisaged in Markem.
69. As Lord Walker has observed, disputes between entirely independent inventors are unusual, but they are not unknown, and I would be unhappy about dismissing this argument on the basis that it was simply overlooked by the draftsman of the 1977 Act. Fortunately, however, it does not seem to me to be necessary to deal with Rorer's argument on that basis.
70. I consider that the answer to Rorer's argument is to be found in the fact that the provisions of paragraphs (a), (b) and (c) of section 37(1) are, as Lord Hoffmann has pointed out, all concerned with "the patent", and not with the underlying invention. Accordingly, on the hypothesis advanced by Rorer, the third party could not, on the facts alleged by Yeda, make a reference under section 37(1), because there would be no basis upon which it could claim that it was the "true proprietor" of the patent registered in the name of Rorer. The "true proprietor" (if Yeda's proposed amended claim is otherwise justified) of the patent would be Yeda (claiming through the Weizmann scientists), as it was from the Weizmann scientists that the applicant for, and grantee of, the patent, Rorer (through Dr Schlessinger), learnt of the invention. Although, on this hypothesis, the third party would have been entitled to apply for a patent under section 7(1)(a), as an "inventor" (before Rorer made its application), it does not follow that it would be entitled to make a reference under section 37(1)(a) to be substituted as a proprietor of a patent (albeit that it is in respect of that invention) with which it has no connection.
71. This conclusion is reinforced by considering the case originally advanced in these proceedings by Yeda, namely to be added rather than substituted as a proprietor. If Dr Schlessinger, the alleged inventor on Rorer's application, had indeed been a co-inventor with the Weizmann scientists, it would be absurd if a wholly independent inventor, as opposed to Yeda, could apply under section 37(1) to apply to be registered as a proprietor jointly with Rorer.
72. Further, particularly given the presumption in section 7(4), a person making a reference under section 37, who wishes to contend that the applicant for the grant of a patent was not an inventor would in practice almost always allege that the applicant learnt of the invention in question from the person making the reference. Indeed, as Lord Hoffmann has mentioned in paragraph 11, in this case, Yeda's original statement, in support of its reference, set out the basis upon which it claimed that Dr Schlessinger learnt of the invention.
73. I do not consider that this answer to Rorer's argument provides any support for the view expressed in paragraph 79 in Markem. The fact that, in order to justify the relief it seeks under section 37(1)(a), Yeda might have to establish that Dr Schlessinger learnt of the invention from the Weizmann scientists does not mean that it would also have to establish that he and/or Rorer were guilty of some wrong against those scientists and/or Yeda by applying for the patent, over and above the fact that neither he nor Rorer were entitled so to apply as they were each outwith the ambit of section 7(2).
74. The other point I wish to deal with concerns the procedural issue identified in paragraph 16 by Lord Hoffmann. As he has explained in paragraphs 36, in order to support its contention that Yeda's application for permission to amend should be refused, reliance was placed by Rorer on the difference in consequence for licensees if Yeda was substituted as the proprietor (as it would seek in its amended reference), rather than being added as a proprietor (as sought in its current reference). Under the statutory scheme, a licence would survive the addition, but not the substitution, of a new proprietor. To permit the amendment would, it is argued, therefore be wrong in principle as it would be unfair to licensees.
75. Leaving aside the facts that any such licensees would only discover the nature of the section 37 reference if they asked for it, and that any reliance on this argument is to some extent circular (as explained by Lord Hoffmann in paragraph 37), it appears to me that this is not a valid argument, at least in so far as it is said to raise a principled objection to the proposed amendment, as opposed to a potentially specific fact-based objection which might be available in a particular case.
76. If, in a particular case, it could be shown that a licensee had reasonably relied (either when agreeing to take the licence or later) on the fact that a section 37 reference sought to add, rather than to substitute, a new proprietor, then that would be a factor which could properly be taken into account when considering an application to amend the reference to substitute the new proprietor. As the Hearing Officer in this case said, rule 100 of the Patent Rules gives a discretionary power to permit an amendment, and there no doubt could be cases where it would not be just to permit an amendment, at least without conditions.