Patent Protection Depends on Proof of Invention


A recent ruling by the House of Lords, in a case involving a patent, marks a significant change to UK patent law. Prior to the decision, under UK law an action brought to prove entitlement to a patent could only be commenced against someone if it could be demonstrated that they had breached the law in some way. The House of Lords ruled that this approach was incorrect and that in a claim to assert entitlement to a patent, all that is necessary is that the claimant is able to prove that he or she was the inventor of the subject of the patent. The Lords also ruled that an amendment of a claim from one of joint entitlement to a patent to one of sole entitlement did not amount to a new claim. Accordingly, the two-year limitation period on such claims did not apply.
In the words of Lord Hoffman, “The first step in any dispute over entitlement must be to decide who the inventor or inventors of the claimed invention were. Only when that question had been decided could one consider whether someone else might be entitled.”
This ruling is important as it enables those who can prove that they invented a patentable invention to claim the right to the patent or prevent someone else patenting it. This significantly advances the rights of inventors.
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Partner Note
Rhone-Poulenc Rorer International Holdings Inc & Anr v Yeda Research & Development Co Ltd., HL 24 October 2007. See
Overturning Markem Corp v Zipher Ltd. [2005] RPC 31.

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