David Parsons v Convatec Limited

David Parsons v Convatec Limited

Section 40 of the Patents Act 1977 does not require the patent to be granted to the employer or the employee to be named as inventor; the prescribed period under section 40 is a limitation period excluding the Limitation Act 1980; benefit from a patent can accrue without commercial exploitation; prior use or potential invalidity does not bar a compensation claim unless the patent is revoked; and there is no sufficient reason to extend time for claims brought many years out of time without evidence of good reason.

Parties
Claimant: David Parsons; Defendant: Convatec Limited
Jurisdiction
England and Wales
Judgment Date
11 September 2024
Procedural Posture
Patent Compensation Claim (employee Inventions) / Ruling on Strike Out/summary Judgment Application and Extension of Time Application
Outcome
Application to strike out/summary judgment granted in part and refused in part; application to extend time refused.
Legal Topics
Employee Compensation for Inventions, Patent Ownership, Limitation Periods, Extension of Time, Patent Benefit Assessment
Intellectual Property Law Employment Law Employee Compensation for Inventions Patent Ownership Limitation Periods Extension of Time Patent Benefit Assessment

Case Brief

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Parties

David Parsons

Claimant

Convatec Limited

Defendant

Procedural Posture

Patent Compensation Claim (employee Inventions) / Ruling on Strike Out/summary Judgment Application and Extension of Time Application

Legal Issues

  1. 1 Whether a claim under section 40 of the 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 compensation
  3. 3 Whether section 9 of the Limitation Act 1980 bars claims for compensation under section 40 of the Patents Act 1977

Ratio Decidendi

Section 40 of the Patents Act 1977 does not require the patent to be granted to the employer or the employee to be named as inventor; the prescribed period under section 40 is a limitation period excluding the Limitation Act 1980; benefit from a patent can accrue without commercial exploitation; prior use or potential invalidity does not bar a compensation claim unless the patent is revoked; and there is no sufficient reason to extend time for claims brought many years out of time without evidence of good reason.

Court Disposition

Application to strike out/summary judgment granted in part and refused in part; application to extend time refused.

Orders

  • Claims in respect of EP1343510 (BJP 2002) and EP1539070 (BPW 2004) are struck out as out of time.
  • Other aspects of Convatec's application to strike out/for summary judgment are refused.