Shanks v Unilever Plc & Ors [2017] EWCA Civ 2 (18 January 2017)

Shanks v Unilever Plc & Ors [2017] EWCA Civ 2 (18 January 2017)

The patents resulting from Professor Shanks' invention, while generating substantial licence income, did not confer an 'outstanding benefit' on Unilever when measured against the size and nature of the Unilever Group's undertaking. The calculation of benefit should be based on actual receipts from exploitation of the patents, without adjustment for the time value of money or deduction for corporation tax. The relevant undertaking is the Unilever Group as a whole. The Hearing Officer applied the correct legal test and did not err in law or principle.

Citation
[2017] EWCA Civ 2
Parties
Claimant/appellant: Ian Alexander Shanks; Defendant/respondent: Unilever PLC; Defendant/respondent: Unilever NV; Defendant/respondent: Unilever UK Central Resources Limited
Jurisdiction
England and Wales
Judgment Date
18 January 2017
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (patents Court)
Outcome
Appeal dismissed
Legal Topics
Employee Inventions, Patent Compensation, Outstanding Benefit, Calculation of Benefit, Fair Share, Corporate Structure and Group Undertakings
Intellectual Property Law Employment Law Employee Inventions Patent Compensation Outstanding Benefit Calculation of Benefit Fair Share Corporate Structure and Group Undertakings

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Parties

Ian Alexander Shanks

Claimant/appellant

Unilever PLC

Defendant/respondent

Unilever NV

Defendant/respondent

Unilever UK Central Resources Limited

Defendant/respondent

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (patents Court)

Legal Issues

  1. 1 Whether the patents resulting from Professor Shanks' invention were of 'outstanding benefit' to Unilever within the meaning of s.40(1) Patents Act 1977
  2. 2 How 'benefit' to the employer should be calculated for the purposes of employee compensation under the Patents Act 1977
  3. 3 Whether the calculation of benefit should include the time value of money and/or be reduced by corporation tax

Ratio Decidendi

The patents resulting from Professor Shanks' invention, while generating substantial licence income, did not confer an 'outstanding benefit' on Unilever when measured against the size and nature of the Unilever Group's undertaking. The calculation of benefit should be based on actual receipts from exploitation of the patents, without adjustment for the time value of money or deduction for corporation tax. The relevant undertaking is the Unilever Group as a whole. The Hearing Officer applied the correct legal test and did not err in law or principle.

Court Disposition

Appeal dismissed

Orders

  • The appeal by Professor Shanks is dismissed.
  • The decision of Arnold J. and the Hearing Officer is affirmed.