Irides: Weekly global patent litigation update

This edition features updates from: The UK, Ireland, Tanzania and the Unified Patent Court (UPC).

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world.
 

UK

Court of Appeal construes important statutory provisions relating to employee compensation claims. 

On 26 October 2026, the Court of Appeal (CoA) handed down a decision addressing two of the lesser-known sections of the Patents Act 1977 (PA 1977) in the long-running dispute in Parsons v Convatec [2026] EWCA Civ 1357, which concerns an employee inventor compensation claim and is currently scheduled for a 37-day trial in February 2028.  

The background to these proceedings is as follows: Dr Parsons was an analytical chemist for over three decades at Convatec, a company focussed on the development of medical products. During his tenure, Dr Parsons was a named inventor on a number of patents relating to Convatec’s commercially successful advanced wound care products, including those sold under the Aquacel® brand. Estimated global sales of these products amounted to $3.2 billion by the end of 2021. Dr Parsons issued proceedings in 2022 and currently seeks compensation of up to around £366 million. 

One of the pre-requisites for a successful employee compensation claim is that the “invention or the patent for it (or the combination of both) is of outstanding benefit to the employer” (s.40(1)(b) PA 1977). Convatec pleaded that it was not open to Dr Parsons to argue that the patents and/or inventions were of “outstanding benefit” to Convatec collectively if they were not of outstanding benefit individually – the so-called aggregation point. Dr Parsons sought to strike out this part of Convatec’s Defence but, at first instance, Mr Justice Mellor (Mellor J) declined Dr Parsons’ application. The CoA held that the task of the Court in strike out applications in cases concerning a short point of statutory construction is not to – as Mellor J was said to have done – consider whether the party resisting the strike out has a reasonable prospect of success, but to “grasp the nettle” and determine the correct interpretation of the relevant provision. The Court then went on to find that Dr Parsons’ approach was the correct one and Convatec’s pleading relating to aggregation was struck out. The question of whether it is appropriate to aggregate on the facts of the case remains open and Lord Justice Arnold (Arnold LJ), giving the leading judgment, urged Dr Parsons to adopt a sensible approach to specifying which combinations he relies upon, and why, well in advance of trial.

The second part of the CoA decision concerns costs budgeting, by which the Court sets ceilings for parties’ costs recovery at an early stage of proceedings. In England and Wales, costs budgeting typically only applies to claims with a value of less than £10m. However, in this case, the parties had agreed to costs budgeting on the basis that it would assist Dr Parsons in obtaining ATE insurance to cover any adverse costs awards that were ultimately made against him.  Under s106 of the PA 1977, in employee inventor compensation claims, the Court is required to have regard to the financial position of the parties “in determining whether to award costs or expenses to any party and what costs or expenses to award.”  Dr Parsons said that this meant that the Court should have regard to his financial position at the costs budgeting stage; Convatec disagreed, arguing that this was not an “award” of costs.  At first instance, Mr Justice Richards agreed with Convatec but held that even if he was wrong on that, having regard to s106 would have had no bearing on Convatec’s budget.  The CoA disagreed on both counts and limited Convatec’s budget to £4m (down from approximately £6.5m).

In a short postscript, Arnold LJ bemoaned the law of employee compensation in England and Wales describing it as “not fit for purpose.” He suggested that the uncertainty around the current legislation has contributed to lengthy and costly proceedings in this area, which has meant that only two cases have led to an award in the 50 years since the enactment of this section of the PA 1977. Arnold LJ noted that “other models of employee inventor compensation scheme are available.” His reference to the German approach in the judgment might give a hint as to one area where he would look for inspiration.
 

Ireland

High Court confirms strict approach to SPC protection for second medical uses. 
[Merck v The Controller of Intellectual Property]

On 9 September 2026, the High Court dismissed Merck’s appeal against the refusal of an SPC for Mavenclad, a treatment for relapsing remitting multiple sclerosis. Mavenclad’s active ingredient, cladribine, had previously been authorised to a different company, under the brand Litak, for the treatment of hairy cell leukaemia. However, Merck’s basic patent protected a dosage regimen of cladribine for treating multiple sclerosis. The case therefore concerned a second medical use where the active ingredient had already been the subject of an earlier Marketing Authorisation (MA).

The Court rejected Merck’s first two grounds of appeal by applying the CJEU’s decision in Santen, which it considered could be understood as overturning, or at least significantly restricting, Neurim. Santen requires “product” under Art. 3(d) Regulation (EC) No. 469/2009 to be construed strictly as the active ingredient, meaning that a new therapeutic application does not create a distinct product where that active ingredient has previously been authorised. Merck also sought to rely on the scope of its basic patent, but the Court held that the analyses under Art. 3(a) and Art. 3(d) are separate. While Art. 3(a) requires consideration of the protection afforded by the basic patent, under Art. 3(d) the question was simply whether cladribine had previously been the subject of an MA. 

Merck’s remaining grounds did not alter that conclusion. Its argument that there should be correspondence between the authorised product and the invention protected by the patent was, in the Court’s view, a policy argument which properly fell to the EU legislature. Santen had already struck the relevant balance between protecting pharmaceutical research and the public health objectives of the SPC regime. Finally, the Court rejected Merck’s argument that cladribine in Mavenclad had a different pharmacological and therapeutic action from that in Litak. The relevant inquiry concerned the identity of the active ingredient, rather than its effect or action. As the active ingredient in both products was cladribine, the earlier Litak MA prevented the Mavenclad MA from satisfying Art. 3(d).

Accordingly, the Court upheld the Controller’s refusal of the SPC and also declined to make a reference to the CJEU, finding Santen sufficiently clear to determine the appeal.
 

UPC

Court of Appeal clarifies public prior use test in partial revocation of Agfa patent. 
[Afga v Gucci UPC-CoA-582/2025 et al.]

On 21 October 2026, the CoA partially overturned a decision of the Hamburg Local Division (LD) concerning Agfa’s patent for methods of decorating natural leather. The LD had dismissed both Agfa’s infringement action against Gucci and Gucci’s counterclaims for revocation. On appeal, the CoA held that independent claim 1 lacked novelty in view of the prior public use of Gucci’s “Flora” leather products. However, it confirmed that the invalidity of an independent claim does not automatically render its dependent claims invalid and maintained the patent in part. Agfa’s infringement appeal was, however, dismissed.

The central issue concerning public prior use was whether the manufacturing method used to produce Gucci’s publicly available “Flora Wallet” product formed part of the prior art under Art. 54(2) EPC. The CoA held that a manufacturing method is made available to the public where, at the relevant date, the skilled person could establish what that method had been without undue burden, for example, through analysing the composition of a publicly used product. Importantly, the CoA rejected any additional requirement that the skilled person must have had a particular reason to analyse the product, finding no basis for this in the EPC. The disclosure must enable the skilled person, using their common general knowledge, to carry out the claimed method, but there is no requirement to reproduce features falling outside the claimed invention.

Applying these principles, the CoA found that the Flora Wallet had been publicly available before the patent’s application date and that its analysis would have directly and unambiguously disclosed the features of claim 1. Accordingly, claim 1 lacked novelty.

As regards dependent claims, the CoA reaffirmed its decision in Fujifilm v Kodak that the invalidity of an independent claim does not necessarily invalidate its dependent claims, which must be assessed separately where the patent is challenged in its entirety. However, the patentee must sufficiently identify and substantiate which dependent claims can be said to be independently valid if the independent claim falls.
 

Tanzania

Patent reforms introduce 20 year patent term and extend utility model protection. 
[Written Laws (Miscellaneous Amendments) Act 6 of 2026]

The United Republic of Tanzania has implemented a number amendments to its Patents Act, including extending the term of patents to 20 years from filing (rather than 10 years with possible extensions based on proof of working the invention) and increasing utility model protection from 7 to 10 years.

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