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 “invention” for the purposes of the Patents Act 1977, which states the invention is to be that specified in the claim of a patent, “unless the context otherwise requires”. The debate centred on whether this was a case where the context did so require, with the invention defined independently of the patent claims.

The judge noted that the Act clearly describes the invention being made by the employee in claims brought under s40(1) as being separate from that contained in the granted patent, with the two points clearly being referred to independently. She considered that the “invention” for this purpose is to be the “Eureka moment” that the inventor had which eventually enables the patent claim to be made, rather than the invention as defined by the patent claim itself.

The judge emphasised that the wording does then require that the invention be the subject of a patent. Consequently, while the basis of the invention is that “Eureka moment”, that moment must be clearly and objectively linked to the patents themselves in some way. Crucially, making this link does not require the inventor to go claim by claim through those patents, establishing the inventive step of each and to show how that relates back to the invention. Instead, the link can be demonstrated based on the specification of the patent. This would be enough to establish that the patent overall links back to that “Eureka moment”.

Key takeaways

This judgment provides some possible guidance on how to address claims for compensation by employee inventors. While only needing to compare the employee’s invention (in terms of the “eureka moment” itself) to the specification clearly reduces the procedural burden on the inventor, it may not offer quite the same clarity to companies when it comes to rewarding their employee inventors.

However, the biggest burden on inventors in succeeding with such a claim remains in proving that their invention is of “outstanding benefit” to their employer. This constitutes a very high bar, especially in the context of companies which routinely innovate and where the inventor is employed to innovate. The height and importance of this hurdle remains untouched by this judgment.

Written by Fred Cascarini and Jae Park