Shanks v Unilever Plc & Ors

Shanks v Unilever Plc & Ors

The benefit derived by Unilever from the Shanks patents (£24.5m) was not 'outstanding' within the meaning of s.40(1) Patents Act 1977 when measured against the size and nature of Unilever's undertaking. The Hearing Officer applied a multi-factorial test, considering rate of return, inventiveness, and disparity of outcome, but concluded the benefit was not exceptional in the context of Unilever's overall business. The calculation of benefit should not include time value of money or be reduced for corporation tax.

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 / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Employee Inventions, Patent Compensation, Outstanding Benefit, Fair Share, Patent Assignment
Intellectual Property Employment Law Employee Inventions Patent Compensation Outstanding Benefit Fair Share Patent Assignment

Case Brief

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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 / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the patents conferred an 'outstanding benefit' to the employer under s.40(1) Patents Act 1977
  2. 2 Whether the calculation of benefit should include time value of money
  3. 3 Whether benefit should be calculated net of tax

Ratio Decidendi

The benefit derived by Unilever from the Shanks patents (£24.5m) was not 'outstanding' within the meaning of s.40(1) Patents Act 1977 when measured against the size and nature of Unilever's undertaking. The Hearing Officer applied a multi-factorial test, considering rate of return, inventiveness, and disparity of outcome, but concluded the benefit was not exceptional in the context of Unilever's overall business. The calculation of benefit should not include time value of money or be reduced for corporation tax.

Court Disposition

Appeal dismissed