Unilever Plc & Ors v Shanks [2010] EWCA Civ 1283 (25 November 2010)

Unilever Plc & Ors v Shanks [2010] EWCA Civ 1283 (25 November 2010)

'That person' in s.41(2) of the Patents Act 1977 refers to the actual assignee with its actual attributes, and the benefit to be considered is the actual benefit derived by the employer or connected assignee, not a hypothetical benefit based on a notional open market transaction. The statutory scheme is built around the actual employer and actual benefit, and assignments within a group do not alter this approach.

Citation
[2010] EWCA Civ 1283
Parties
Appellant/defendant: Unilever Plc; Appellant/defendant: Unilever NV; Appellant/defendant: Unilever UK Central Resources Limited; Respondent/claimant: Ian Alexander Shanks
Jurisdiction
England and Wales
Judgment Date
25 November 2010
Procedural Posture
Appeal / Court of Appeal Judgment on Appeal From High Court (chancery Division, Patents Court)
Outcome
Appeal allowed
Legal Topics
Employee Compensation for Inventions, Patent Assignments Within Corporate Groups, Interpretation of Patents Act 1977 S.40 and S.41
Intellectual Property Employment Law Employee Compensation for Inventions Patent Assignments Within Corporate Groups Interpretation of Patents Act 1977 S.40 and S.41

Case Brief

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Parties

Unilever Plc

Appellant/defendant

Unilever NV

Appellant/defendant

Unilever UK Central Resources Limited

Appellant/defendant

Ian Alexander Shanks

Respondent/claimant

Procedural Posture

Appeal / Court of Appeal Judgment on Appeal From High Court (chancery Division, Patents Court)

Legal Issues

  1. 1 How to determine the 'benefit' to an employer for the purposes of inventor's compensation under s.40 and s.41 of the Patents Act 1977 when a patent is assigned within a group of connected companies.
  2. 2 Whether 'that person' in s.41(2) refers to the actual assignee or a hypothetical third party.

Ratio Decidendi

'That person' in s.41(2) of the Patents Act 1977 refers to the actual assignee with its actual attributes, and the benefit to be considered is the actual benefit derived by the employer or connected assignee, not a hypothetical benefit based on a notional open market transaction. The statutory scheme is built around the actual employer and actual benefit, and assignments within a group do not alter this approach.

Court Disposition

Appeal allowed

Orders

  • The appeal is allowed; the parties are to agree the consequential order and the fair share for Professor Shanks.