Contributors
Shanks v Unilever plc and others [2019] UKSC 45
Facts
Professor Shanks was employed by Unilever and was responsible for the invention in a series of patents that related to blood-testing kits used by diabetics. Unilever had a significant income from royalties and Professor Shanks claimed compensation under the Patents Act 1977. This states that an employee can claim compensation where he has made an invention belonging to the employer for which a patent has been granted and the patent is of outstanding benefit to the employer. 13 years after the original application, the case found its way to the Supreme Court.
Decision
In a unanimous decision, the Supreme Court decided that the patent had been of outstanding benefit to Unilever and a fair share of the benefit would be £2 million. This was calculated on the basis of 5% of the benefit to Unilever, adjusted for inflation. "Outstanding" in this context meant exceptional and required a comparison with the benefit derived by the employer from other patents it owned, rather than a comparison with the employer's turnover and profits.
Comment
There have been very few decisions under the Patents Act and this decision will make it easier for inventors to claim compensation for their inventions, where they have resulted in the employer obtaining a patent. However, "outstanding benefit" is still a high threshold to prove. Note that employers cannot limit or exclude an employee's right to bring such a claim.
