Patent decision

BL number

O/277/05

Concerning rights in

EP(UK) 0667165

Hearing Officer

Mr R C Kennell

Decision date

20 October 2005

Person(s) or Company(s) involved

Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International (Holdings) Inc and another

Provisions discussed

PA.1977 sections 37(1), 37(5), 130(7); CPC (1989) Art 23; Civil Procedure Rules 1998 rule 17.4

Keywords

Amendment, Disclosure, Entitlement, Evidence

Related Decisions

[2005] UKIntelP o16305, [2005] UKIntelP o21205

Summary

Second preliminary decision

Following the refusal in the first preliminary decision ([2005] UKIntelP o16305) to stay the proceedings, the claimant sought to amend its statement to allege sole proprietorship as an alternative to joint proprietorship, on the basis that the named inventors had not made any inventive contribution. The defendants argued that the amendment, being filed outside the two-year period of section 37(5), should not be allowed because it was a new claim which did not arise out of the same or substantially the same facts as the original claim as required by r.17.4 CPR. The claimant believed that this was a matter of discretion and that no separate limitation point arose.

The hearing officer was prepared to accept that section 37(5) should be interpreted as a limitation period by virtue of Art 23 CPC (1989) and section 130(7), and that the authorities cited to him on r.17.4 CPR on balance favoured the defendants. However, since the comptroller could give what order he thought fit on a reference under section 37 without requiring amendment of pleadings, the hearing officer held that the situation was not analogous to the amendment of a claim before the court and that he was not bound by r.17.4 CPR. He exercised discretion to allow the amendments, principally on the grounds (i) that it was preferable to have the full case before the comptroller and that prejudice to the defendants could be compensated in costs (Cobbold v London Borough of Greenwich, CoA 09/08/1999), and (ii) that the defendants had been aware of the possibility of an allegation of sole ownership on the basis of parallel foreign proceedings and were not starting from a worse position than any other defendant as regards the filing of evidence.

The defendants having prior to the hearing filed a counter-statement addressing the issues in the amended statement, the hearing officer directed that the evidence rounds should commence from the date of the decision. He refused the defendants requests for an opportunity to file a statement of reply, for mutual disclosure of documents from the parallel US disclosure exercise, and for a specific timetable for expert evidence. He also observed that he saw no reason for any substantial departure from the normal procedures before the comptroller, notwithstanding the complexity of the case. Submissions on costs were invited.