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Shanks -v- Unilever

Case Summary  |  Judgment  |  18 January 2017


In Shanks v Unilever [2017] EWCA Civ 2, the Court of Appeal dismissed Prof Shanks’ second tier appeal against the IPO’s rejection of his multi-million pound claim under s.40(1) of the Patents Act 1977 for inventor’s compensation against his former employer, Unilever, in respect of patents which he claimed to be of ‘outstanding benefit’ to Unilever. The patents were in for the so-called electrochemical capillary fill device. Despite some initial work, Unilever did not commercialise the technology itself. Much later it managed to licence the patents to a number of large players in the field of blood glucose testing for diabetics, bringing in approximately £24.5m in net benefit from the patents.

The Court of Appeal, agreeing with Arnold J’s judgment on Prof Shanks’ first appeal, found that there were no grounds for criticism of the Hearing Officer’s consideration of the key threshold question of whether the patents were of ‘outstanding benefit’. He performed the required multi-factorial assessment, evaluating the merits of the various points raised by the parties. He did not decide the case, as Prof Shanks contended, purely on the basis that Unilever was “too big to pay”.

Daniel Alexander QC and Jonathan Hill, instructed by Herbert Smith Freehills LLP, acted for Unilever.