Parsons v Convatec Limited [2026] EWHC 325 (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.
The judgment of Richards J concerns the effect of s106 of the Patents Act 1977 on the issue of costs budgeting in a s40 claim.
s106 provides that the Court, in certain patent proceedings, including those under s40, “in determining whether to award costs or expenses to any party and what costs and expenses to award, shall have regard to all the relevant circumstances, including the financial position of the parties.”
Dr Parsons argued that s106 required the Court to take into account his financial position at the costs budgeting stage, thereby requiring a substantial reduction to Convatec’s approved costs budget; he suggested that Convatec should be limited to costs recovery of no more than a) IPEC scale costs, b) Dr Parsons’ available ATE insurance cover, or b) one third of Dr Parsons’ budget. Convatec argued that s106 does not apply to the costs budgeting process.
Richards J held that s106 does not require the Court to have regard to a party’s financial position when approving the parties’ costs budgets. In any event, he would not have made any of the adjustments sought by Dr Parsons because they failed to give effect to all the relevant circumstances: In particular, Dr Parsons chose to bring a claim for a very large sum in the High Court and Convatec is likely to incur substantial costs in providing disclosure and in defending Dr Parsons’ claim that each of the patents and inventions and any combination thereof yielded an ‘outstanding benefit’. Accordingly, s106 had no effect on the Judge’s determinations on the costs budget (for which see [2026] EWHC 300 (Pat)).
Chris Aikens, instructed by Freshfields LLP, appeared for the Defendant, Convatec, led by Robert Marven KC