Parsons v Convatec [2023] EWHC 1535 (Pat)
Dr David Parsons, an analytical chemist, was employed by Convatec. He claims to have made, alone or jointly with others, various inventions and patents which belong to Convatec. The inventions mainly relate to the use of silver in antimicrobial plasters and/or dressings and related products. In his claim, he seeks employee compensation from Convatec pursuant to section 40 of the Patents Act. Convatec applied to strike out (or for summary judgment in respect of) certain aspects of Dr Parsons’ claim on grounds that: parts are time barred by the Limitation Act; parts are outside the prescribed period for bringing a claim under section 40, and parts stand no realistic prospect of success because there was no patent granted, the patent was not granted to Convatec and/or the patent had been held invalid by the Court or the EPO. Dr Parsons cross-applied for extension of the prescribed period.
Zacaroli J heard the applications on 8 June 2023. The Judge decided that: (i) the existence of the prescribed period for section 40 claims means that the Limitation Act does not apply; (ii) it is unnecessary for the patents to have been granted to Convatec and (iii) the claims in relation to invalid patents would otherwise have been allowed to proceed. Dr Parsons’ cross-application to extend the prescribed period was refused.
Adam Gamsa appeared as sole counsel for Convatec, instructed by Bird & Bird LLP.