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Addleshaw Booth & Co has launched a landmark action against a UK subsidiary of healthcare product manufacturer Johnson & Johnson
The action is on behalf of one of its own lawyers, a scientist turned solicitor, for compensation for a medical invention he developed while working for the company.
Stuart Jackson is a former scientist who spent 14 years in the company's research and development department. He later changed profession and is now a senior solicitor in Addleshaws' intellectual property (IP) unit.
The unusual action has been taken under Section 40 of the Patent Act 1977, which aims to reward employees who create inventions from which their employers gain "outstanding benefit". It is thought that only three such actions have ever reached the courts in the 25 years since the legislation was introduced, none of which were successful. Cases have fallen because of a failure to agree on a definition of the term 'outstanding benefit'.
Richard Kempner, head of IP at Addleshaws, said: "All three previous cases under this legislation have failed, but we believe if ever there was a case with a good chance of succeeding, this one is it. We assessed the merits of the case and decided to do it on a no-win, no-fee basis."
Jackson is the named inventor on a patent covering Actisorb Plus, a surgical wound dressing which incorporates activated charcoal cloth and contains a small quantity of silver or other antiseptic. The product aids the healing process and reduces unpleasant and distressing smells when used on heavily infected wounds, such as leg ulcers.
The product was invented in 1980 for the Patient Care Division of Johnson & Johnson. It went on the market six years later and is still being sold today.
Kempner said: "It's a patented product and Stuart is named on the patent. It even sold as a 'unique patented treatment'. One of the loopholes, and why companies have been able to avoid paying out under the current statutory regime, is the difficulty in linking the success of a product directly with the patent.
"In this case, we're not so troubled by it because Johnson & Johnson has made a conscious effort to play up the patent aspect and markets it as a unique patented treatment."
The move comes against a background of Government plans to radically shake up the existing patent law regime. The Department of Trade and Industry (DTI) and the Patent Office have launched a consultancy paper as part of moves to bring the UK into line with changes in the European Patents Convention.
One suggestion is that employees who produce commercially successful inventions could share in the profits of their employers. Another is that they could be awarded a percentage of royalty payments.
Kempner said: "In the highly unlikely event that we're not successful with the claim, then this is the test case that we'll be lobbying the DTI with, to the convince them to implement the changes in the discussion paper."