A win for innovation: The Shanks v Unilever battle
Professor Ian Shanks is the inventor of the electrochemical capillary fill device (ECFD), a system used widely in glucose sensors, predominantly with diabetes patients. He designed the prototype for this while working for a subsidiary of Unilever. However, he never received any money from his former employer, even though the invention has made millions for the company.
After 13 years of fighting for compensation, the Supreme Court has awarded him with a £2 million payout for recognition of the ‘outstanding benefit’ received by his former employer as a consequence of his invention.
Martin Noble, partner and IP specialist at the firm, commented:
“It’s rare to see cases on section 40 of the UK Patents Act, let alone ones that involve such a large compensation sum delivered by the Supreme Court.
“However, that doesn’t mean this is an isolated case. Many large corporates rely on valuable and complex IP, and this case may inspire other inventors who believe they are owed compensation to challenge such businesses.
“Most of all, this ruling proves that context is essential and the overall profit of a company cannot always be compared to the income of an invention when calculating ‘outstanding benefit’. In this case, the income of Unilever’s ice cream business was excluded, as it was not relevant to Professor Shanks’ research unit.
“Employers should take note of this decision. Unless large corporates properly review their IP capturing procedures and prepare for any challenges, they may also find themselves in Unilever’s position.”