Parsons v Convatec Limited [2026] EWHC 98 (Pat)
Dr Parsons has brought a claim against Convatec for an award of compensation under section 40 of the Patents Act 1977. He alleges that Convatec derived an outstanding benefit from inventions made by him during his 30-year employment by Convatec, which are now protected by seven patent families. All seven patent families relate to wound dressings.
In his judgment from a two-day CMC, Mellor J ruled on two matters: (1) A strike-out application by Dr Parsons to strike out part of Convatec’s Defence; and (2) whether to order a split trial.
Dr Parsons sought to strike out parts of Convatec’s Defence which denied that section 40 allowed for an aggregation of the benefits of multiple patents and/or inventions which individually do not amount to an “outstanding benefit”. The point is a novel one which has not been considered in previous section 40 case law. Mellor J refused to exercise his discretion to strike out the relevant parts of the Defence, on the basis that (a) there were no major case management or cost benefits from the grant of strike out; (b) doing so would be premature on as of yet unestablished facts and the issue involves a difficult point of law in a developing area; and (c) even if the relevant parts were struck out, the Court would still have to determine whether aggregation of benefits is permissible on the particular facts of this case.
On the second issue, Mellor J refused to order a split trial on the proposal, advanced by Convatec in accordance with the earlier guidance of Meade J but resisted by Dr Parsons, to try the two earliest and most valuable patent families (which relate to silverisation of wound dressing) first. No sufficiently clean split between the issues for trial could be identified, in the main due to significant cannibalisation of the revenues of earlier product lines by later ones which also incorporate other patent families at issue. Accordingly, a split trial along the lines previously contemplated by Meade J would not yield efficiencies of cost and time.
Brian Nicholson KC and Chris Aikens, instructed by Freshfields LLP, appeared on behalf of the Defendant, Convatec.