The claimant appealed from refusal of statutory compensation under the 1977 Act. He had invented a form of pump which was used by his employers, the respondents in the management of diabetes management.
Held: The appeal succeeded: ‘the correct approach to the application of section 40 and the one that does least violence to its language lies between these extremes. It is to look at the commercial reality of the situation but to do so, in a case such as the present, from the perspective of the inventor’s employer. Where, as here, a group company operates a research facility for the benefit of the whole group and the work results in patents which are assigned to other group members for their benefit, the focus of the inquiry into whether any one of those patents is of outstanding benefit to the company must be the extent of the benefit of that patent to the group and how that compares with the benefits derived by the group from other patents for inventions arising from the research carried out by that company. This gives practical and commercial effect to the language of section 41 and involves a comparison of like with like.’
The Shanks patents were of outstanding benefit to Unilever and CRL and Professor Shanks is entitled to a fair share of that benefit amounting to pounds 2m.
Judges:
Lady Hale, President, Lord Reed, Deputy President, Lord Hodge, Lady Black, Lord Kitchin
Citations:
[2019] UKSC 45, [2019] Bus LR 2730, [2019] WLR(D) 591, [2019] 1 WLR 5997, [2019] RPC 24, [2020] 2 All ER 733, UKSC 2017/0032
Links:
Bailii, Bailii Summary, WLRD, SC, SC Summary, SC Summary Video, SC 2019 Feb 06 am Video, SC 2019 Feb 06 pm Video, SC 2019 Feb 07 pm Video
Statutes:
Jurisdiction:
England and Wales
Citing:
At ChD (1) – Shanks v Unilever Plc and Others ChD 3-Dec-2009
Appeal against refusal to admit supplementary statement of case. The claimant had, while employed by the defendant created a pump which came to be widely used in the management of diabetes. He was seeking recompense for his contribution. . .
At PatC – Shanks v Unilever Plc and Others PatC 23-May-2014
The claimant sought statutory compensation, having whilst employee of the defendant, created a pump which came to widely used in the testing of diabetic status. . .
Leave to Appeal to CA – Shanks v Unilever Plc and Others CA 17-Jun-2015
Renewed application for leave to appeal against rejection of employee’s invention compensation claim. . .
Appeal from – Shanks v Unilever Plc and Others CA 18-Jan-2017
The claimant professor had invented a pump mechanism which came to be used by his employers for the sale of pumps used to manage diabetic testing. He appealed against refusal of statutory compensation. . .
Cited – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Cited – Actavis Group PTC EHF and Others v ICOS Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .
Cited – Kelly and Another v GE Healthcare Ltd PatC 11-Feb-2009
The court was asked to interpret the application of section 40 of the 1977 Act.
Held: The benefit of the section was to be taken by the actual inventor, and did not extend to those who had merely contributed. In calculating the benefit, the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 24 April 2022; Ref: scu.642831