Parsons v Convatec [2023]

Parsons v Convatec Ltd [2023] EWHC 1535 addressed an employer's application to strike out or summarily dismiss part of an employee's claim for compensation under Section 40 of the Patents Act 1977. This section allows employees to seek compensation for inventions that bring outstanding benefit to the employer.

The claimant, an analytical chemist, contended that his work contributed to inventions for which Convatec Ltd obtained patents. He argued that these patents significantly benefited Convatec, justifying compensation under Section 40. Convatec disputed the claim, leading to legal proceedings.

The application aimed to strike out or summarily dismiss claims related to specific patents, including Bray 2003, Bowler, Jacques and Parsons 2002, Bowler, Parsons and Walker 2004, Percival, Bowler and Parsons 2007, and Bonnefin, Bugedo, Parsons and Thompson 2013.

The court addressed several key legal issues during the proceedings. Firstly, it rejected Convatec's argument that the patent had to be granted to Convatec for a claim under Section 40, emphasising that the section requires a patent to be granted and benefit the employer, not necessarily owned by them. The court also clarified that Section 40 does not mandate the employee to be named as an inventor; it requires the employee to have devised the invention.

Furthermore, the court dismissed Convatec's argument under Section 9 of the Limitation Act 1980, stating that Section 9 does not apply to claims under Section 40 of the Patents Act 1977. For patents that had been revoked and the prescribed period had expired, the court considered that no action could proceed without a renewal of the limitation period.

The court held that an invention need not be put to commercial use to benefit the patentee, rejecting Convatec's argument related to Percival, Bowler and Parsons 2007. Regarding Bonnefin, Bugedo, Parsons and Thompson 2013, the court determined that the issue of whether the invention was put on the market before filing the patent application was a factual matter to be resolved at trial.

In exercising its discretion, the court declined to extend the limitation period for claims related to Bowler, Jacques and Parsons 2002 and Bowler, Parsons and Walker 2004, emphasising the need for judicious consideration of such extensions.

This case provides valuable insights into the interpretation and application of Section 40 of the Patents Act 1977, highlighting the court's careful consideration of legal issues and the importance of factual assessments in claims under this provision.
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