NIPC Law

Author Judicial Office UK Licence CC BY-SA 4.0   Source Wikimedia Commons   Jane Lambert Patents Court (Mr Justice Zacaroli) Parsons v Convatec Lt d [2023] EWHC 1535 (Pat) (26 June 2023) This was an application by an employer to strike out or summarily dismiss part of its employee's claim for compensation under s.40 of the Patents Act 1977.  S.7 (2) of the Patents Act 1977 states that a patent for an invention may be granted primarily to the inventor except where a rule of law or contract entitles someone else to claim the invention.  One such exception is provided by s.39  which entitles employers to claim their employees' inventions in certain circumstances.  Most employees who are expected to invent something in the course of their employment enjoy generous salaries and benefits but there are some inventions that are so valuable to the employer that it is just to reward the employee with something extra.  S.40 makes provision for such re...

In   " Educating Samuel: No. 1 Added Matter "  4 Nov 2008 IP Northwest, I explained what is meant by "added matter." There are not many cases on added matter.   One such was   Smith & Nephew Plc v Convatec Technologies Inc .  [2012] EWHC 1602 (Pat). The Context This was an application by Smith & Nephew to revoke Convatec's  European Patent (UK) No. 1,343,510 entitled "Light Stabilized Antimicrobial Materials" on various grounds. In the course of the proceedings Convatec conceded that the patent was invalid and applied to amend.  Smith & Nephew objected to the amendments on the ground that they constituted added matter contrary to s.76 (3) of the Patents Act 1977 . They also argued obviousness and insufficiency. The Section S.76 of the Act provides as follows: " Amendment of applications and patents not to include added matter 76.-(1) An application for a patent which - (a) is made in respect of matter disclosed in an earlier ap...