UK Court of Appeal: Employee Inventors May Rely on the Combined Benefit of Several Patents
Photo: kropekk_pl / Pixabay
The Court of Appeal of England and Wales gave judgment on 26 October 2026 in Parsons v Convatec Ltd [2026] EWCA Civ 1357, a claim for employee-inventor compensation under section 40 of the Patents Act 1977. Arnold LJ gave the lead judgment, with Asplin LJ and Baker LJ agreeing. Both appeals were decided in favour of the inventor, Dr David Parsons.
Dr Parsons, an analytical chemist, worked for Convatec from 1991 to 2023. He claims compensation for inventions in seven patent families, with priority dates from November 2000 to May 2013. Convatec disputes the claim. A 37-day trial is listed for February 2028.
Aggregating the benefit
Section 40 allows compensation where an employee's invention, or the patent for it, has been of "outstanding benefit" to the employer. Convatec's defence argued that benefit must be assessed one patent or one invention at a time. Dr Parsons applied to strike that part of the defence out. The Court of Appeal held that the court may consider the aggregate benefit of more than one invention or patent, and struck out the relevant passages. How far aggregation is justified on the facts is left to the trial judge, and Dr Parsons must specify the combinations he relies on.
Costs budget capped
The second appeal concerned section 106, which requires the court to have regard to the parties' financial positions when awarding costs in such proceedings. The High Court had held that it does not apply to costs budgeting. The Court of Appeal disagreed, set aside the judge's exercise of discretion and approved Convatec's budgeted costs limited to £4 million.
In a postscript, the court noted that in almost 50 years there have been only two successful section 40 claims, and said the legislation is not fit for purpose and needs rethinking.
Indonesia's Patent Law also gives employee inventors a right to compensation for inventions made in the course of employment. The aggregation question in Parsons is one that can arise wherever one inventor's work is spread across several patents.
Sources
Do you or your clients need trademark, patent, annuity or industrial design work in Indonesia? We handle filings, prosecution and renewals, with updates in English. Email us for a quote.
Contact UsIf you enjoyed this article on our portal, you can buy me a coffee via the PayPal link below.
PayPal
