Shanks v Unilever Plc & Ors [2014] EWHC 1647 (Pat) (23 May 2014)

Shanks v Unilever Plc & Ors [2014] EWHC 1647 (Pat) (23 May 2014)

The benefit derived by Unilever from the Shanks Patents, after deduction of tax, was not 'outstanding' in the context of the size and nature of Unilever's undertaking. The hearing officer's multi-factorial assessment was not vitiated by error of law or principle. The time value of money is not a benefit derived from the patent within the meaning of the statute. Research and development costs were properly excluded. The fair share, if payable, would be 5%.

Citation
[2014] EWHC 1647 (Pat)
Parties
Claimant and Appellant: Ian Alexander Shanks; Defendant and Respondent: Unilever PLC; Defendant and Respondent: Unilever NV; Defendant and Respondent: Unilever UK Central Resources Limited
Jurisdiction
England and Wales
Judgment Date
23 May 2014
Procedural Posture
Appeal / Judgment on Appeal From Comptroller General of Patents
Outcome
Appeal dismissed
Legal Topics
Employee Compensation for Inventions, Patent Law—employee Inventions, Assessment of Benefit Under Patents Act 1977, Fair Share of Benefit, Outstanding Benefit Requirement
Intellectual Property Law Employment Law Employee Compensation for Inventions Patent Law—employee Inventions Assessment of Benefit Under Patents Act 1977 Fair Share of Benefit Outstanding Benefit Requirement

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Parties

Ian Alexander Shanks

Claimant and Appellant

Unilever PLC

Defendant and Respondent

Unilever NV

Defendant and Respondent

Unilever UK Central Resources Limited

Defendant and Respondent

Procedural Posture

Appeal / Judgment on Appeal From Comptroller General of Patents

Legal Issues

  1. 1 Whether the benefit derived by Unilever from the Shanks Patents was 'outstanding' within the meaning of section 40(1) of the Patents Act 1977
  2. 2 How to quantify the benefit derived by the employer from the patents for the purposes of employee compensation
  3. 3 Whether deductions for tax, research and development costs, and attribution to other patents (Birch Patents) should be made in calculating benefit

Ratio Decidendi

The benefit derived by Unilever from the Shanks Patents, after deduction of tax, was not 'outstanding' in the context of the size and nature of Unilever's undertaking. The hearing officer's multi-factorial assessment was not vitiated by error of law or principle. The time value of money is not a benefit derived from the patent within the meaning of the statute. Research and development costs were properly excluded. The fair share, if payable, would be 5%.

Court Disposition

Appeal dismissed

Orders

  • The appeal by Prof Shanks is dismissed. The hearing officer's decision is upheld.