In a unanimous
ruling this week, the Supreme Court held Professor Shanks is entitled to
compensation under the Patents Act 1977, s 40, on the basis the patents for the
product he invented in 1982 have been of outstanding benefit to his employer
and he is entitled to a fair share of that benefit, in Shanks v Unilever Plc
[2019] UKSC 45.
Professor Shanks
initially received a salary of £18,000 and a Volvo car for his work on
biosensors, during which he conceived a system for measuring the glucose
concentration in blood, serum or urine. He built the prototype at home using
Mylar film and slides from his daughter’s toy microscope kit and bulldog clips
to hold the assembly together. He accepts the rights to his inventions were
owned by his employer, which sold them to Unilever for £100. The Shanks patents
would later be worth more than £19m, and Unilever’s total earnings from the
patents were about £24m.
The court
considered the meaning of ‘outstanding benefit’ and what percentage of earnings
should be allocated.
Giving the
lead judgment, Lord Kitchin held it was fair to apply a 5% share of the £24m,
which gave Professor Shanks £2m.
He said the
statutory test required the benefit to be ‘outstanding’, which is ‘an ordinary
English word meaning exceptional or such as to stand out and it refers here to
the benefit (in terms of money or money’s worth) of the patent to the employer
rather than the degree of inventiveness of the employee’. In determining the
‘benefit’ to Unilever, Lord Kitchin said the court must consider what is the
employer’s undertaking for this purpose, and ‘what is the relevance of that
undertaking’s size and nature?’
