Parsons v Convatec Ltd [2023] EWHC 1535 (Pat) (26 June 2023)

Parsons v Convatec Ltd [2023] EWHC 1535 (Pat) (26 June 2023)

Claims under s.40 Patents Act 1977 do not require the patent to be granted to the employer or the employee to be named as inventor; the prescribed period for bringing such claims is a limitation period that excludes the application of s.9 Limitation Act 1980; lack of commercial exploitation does not preclude a finding of outstanding benefit; and extension of time to bring claims outside the prescribed period requires sufficient justification, which was not provided in this case.

Citation
[2023] EWHC 1535 (Pat)
Parties
Claimant: David Parsons; Defendant: Convatec Limited
Jurisdiction
England and Wales
Judgment Date
26 June 2023
Procedural Posture
Patent Compensation Claim Under S.40 Patents Act 1977 / Interlocutory Application for Strike Out And/or Summary Judgment
Outcome
Application granted in part; claims in respect of EP1343510 (BJP 2002) and EP1539070 (BPW 2004) struck out as out of time; other claims proceed to trial.
Legal Topics
Employee Compensation for Inventions, Patent Ownership, Limitation Periods, Extension of Time, Outstanding Benefit, Inventorship Requirements
Intellectual Property Law Employee Compensation for Inventions Patent Ownership Limitation Periods Extension of Time Outstanding Benefit Inventorship Requirements

Case Brief

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Parties

David Parsons

Claimant

Convatec Limited

Defendant

Procedural Posture

Patent Compensation Claim Under S.40 Patents Act 1977 / Interlocutory Application for Strike Out And/or Summary Judgment

Legal Issues

  1. 1 Whether a claim for employee compensation under s.40 Patents Act 1977 requires the patent to be granted to the employer
  2. 2 Whether the employee must be named as inventor in the patent to claim under s.40
  3. 3 Whether s.9 Limitation Act 1980 applies to s.40 claims

Ratio Decidendi

Claims under s.40 Patents Act 1977 do not require the patent to be granted to the employer or the employee to be named as inventor; the prescribed period for bringing such claims is a limitation period that excludes the application of s.9 Limitation Act 1980; lack of commercial exploitation does not preclude a finding of outstanding benefit; and extension of time to bring claims outside the prescribed period requires sufficient justification, which was not provided in this case.

Court Disposition

Application granted in part; claims in respect of EP1343510 (BJP 2002) and EP1539070 (BPW 2004) struck out as out of time; other claims proceed to trial.

Orders

  • Claims in respect of EP1343510 (BJP 2002) and EP1539070 (BPW 2004) struck out
  • Other claims not struck out and to proceed to trial