Patent decision

BL number

O/138/09

Concerning rights in

EP 0170375

Hearing Officer

Mr J Elbro

Decision date

19 May 2009

Person(s) or Company(s) involved

Ian Shanks and Unilever Plc, Unilever UK Central Resources Limited, and Unilever NV

Provisions discussed

Patents Act 1977 Sections 40, 41

Keywords

Striking out

Related Decisions

None

Summary

The claimants in an employee compensation claim under section 40 sought to amend their statement of claim by way of a supplementary statement. The statement put forward an argument based on a construction of section 41(2) on calculating the amount of compensation which applied in circumstances where patents had been assigned to a connected company. The argument was that it was necessary to calculate a “putative benefit” of what a reasonable company could have obtained from the patents and use this as the comparator for determining if outstanding benefit was provided and the baseline for calculating how much the employee should share in.

The defendants argued that the amendment to the statement of claim should not be allowed because the claimant’s argument was wrong in law. The hearing officer agreed, holding that the words should take their natural meaning, which was that the hypothetical “person” was the same as the actual person to whom the rights were transferred, except that their position if there had been no connection with the employer needed to be considered. In particular, arguments that with a different exploitation strategy greater returns could have been made from the patent were not directly relevant, although evidence relating to this might have some relevance in determining how much would have been paid in the absence of a connection. To hold otherwise would be to allow claims for sums of money far in excess of what anyone had actually made from the patents. The amendment to the statement of claim was therefore refused.

The defendants also sought striking out of some of the claimants other arguments relating to a claimed share in proceeds from the sale of a company. Although the hearing officer found the evidence relating to these arguments currently scant, he declined to strike them out at this stage.