UK court provides practical guidance for employee inventorship cases

In a rare case concerning the right of an employee to be compensated for creating an invention which makes an “outstanding benefit” to their employer, the UK High Court had to consider the right process for assessing whether a patent fell within the scope of the employee’s invention. (David Parsons v Convatec Limited [2024] EWHC 2111 (Pat).)

The court confirmed that this situation is an exception to the usual approach that a claim for e.g. infringement and/or validity under the UK’s Patents Act should be formulated starting from the patent claims (i.e. from within the “four corners” of the patent document) and expand outwards. On the other hand, an employee compensation claim may begin with identifying the invention of the employee, independently from any patent, and work from there to the patent to show how this is reflected in the ultimate patent specification (not the patent claims).

Background

Dr David Parsons claims compensation from his former employer Convatec Ltd, on the basis that he claims that his inventions were of “outstanding benefit” to Convatec under s40(1) of the Patents Act 1977. 

At the time, this provision allowed an employee to apply for compensation if a patent had been granted to their employer based on the employee’s invention, and that patent was of outstanding benefit to the employer. Since 2005, it has been amended to clarify that it may be either the patent or the invention or both that is of outstanding benefit. However, the wording of the legislation is otherwise equivalent.

Dr Parsons sought to demonstrate his claim of outstanding benefit by setting out his invention first, and then specifying which patents related to different aspects of his invention. Convatec challenged this arguing that Dr Parsons must detail each claim of every patent he was relying on, construe each claim by reference to its inventive step, and then link the inventive step back to his alleged invention. Due to this impasse, the parties sought an order from the court determining which of these frameworks should apply to Dr Parsons’ claim.

Decision

This case turned on the definition of…