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||Neutral Citation Number:  EWHC 1647 (Pat)
||Case No: CH/2013/0414
IN THE HIGH COURT OF JUSTICE
Fetter Lane, London, EC4A 1NL
||23 May 2014
B e f o r e :
THE HON MR JUSTICE ARNOLD
Patrick Green QC, instructed by, and Keith Beresford of, Beresford & Co, for the Appellant
Daniel Alexander QC and Jonathan Hill, instructed by Herbert Smith Freehills LLP, for the Respondents
Hearing dates: 13-15 May 2014
HTML VERSION OF JUDGMENT
Crown Copyright ©
MR JUSTICE ARNOLD :
|The statutory provisions
|Earlier case law regarding employee compensation
|Brief summary of the factual background
|The role of the appeal court
| The structure of the hearing officer's analysis
| What was the benefit to Unilever?
| Time value of money
| Research and development costs
| The Birch Patents
|The employer's undertaking
|Was the benefit outstanding?
| Too big to pay
| How the benefit was obtained
| Commercial risk and rate of return
| The context of the Unilever group
| The value of Unilever's other patents
| The value of patents in general
|What would a fair share be?
| The situation postulated by Floyd J in Kelly
| Time value of money
| Unilever's licensing efforts
| Rate of return
| The contribution of the other inventors
| Inconsistency with Kelly
- This is an appeal by Professor Ian Shanks OBE FRS FREng against a decision of Julyan Elbro, Divisional Director acting for the Comptroller-General of Patents, dated 21 June 2013 (BL O/259/13) dismissing a claim by Prof Shanks against Unilever plc, Unilever NV and one of their subsidiaries (collectively "Unilever") for employee compensation in respect of European Patent (UK) 0 170 375 ("EP375") and related patents (collectively "the Shanks Patents") pursuant to section 40(1) of the Patents Act 1977. In a careful and detailed decision running to 257 paragraphs, which was arrived at following a nine day hearing at which the hearing officer heard oral evidence from eight witnesses, including three experts, and consideration of about 30 files of documentary material, the hearing officer concluded that (i) the benefit to Unilever from the Patents was £24.5 million, (ii) that benefit was not outstanding, and (iii) if (contrary to his conclusion) the Shanks Patents were of outstanding benefit, a fair share of the benefit for Prof Shanks would be 5%. Prof Shanks challenges both the hearing officer's conclusion that the Shanks Patents were not of outstanding benefit and his conclusion as to fair share. By a respondents' notice Unilever challenge his conclusions as to the amount of the benefit and as to fair share.
- It is worth observing at the outset that this is an unusual case. As explained in more detail below, the Shanks Patents were licensed by Unilever to third parties, making it unusually easy to identify the monetary benefit obtained by the patentee from the patents, as opposed to the invention. On the other hand, the fact that Unilever exploited the Shanks Patents by licensing gives rise to arguments which do not appear to have been considered in previous cases.
The statutory provisions
- The relevant legislation has been amended by the Patents Act 2004, but only with effect for patents applied for after 1 January 2005. Accordingly, it is the unamended legislation which applies to the present case. Section 40(1) of the Patents Act 1977 provides as follows:
"Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that the employee has made an invention belonging to the employer for which a patent has been granted, that the patent is (having regard among other things to the size and nature of the employer's undertaking) of outstanding benefit to the employer and that by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer, the court or the comptroller may award him such compensation of an amount determined under section 41 below."
- Section 41 provides, so far as relevant, as follows:
"(1) An award of compensation to an employee under section 40(1) or (2) above in relation to a patent for the invention shall be such as will secure for the employee a fair share (having regard to all the circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, from the patent for the invention or from the assignment, assignation or grant to a person connected with the employer of the property or any right in the invention or the property in, or any right in or under, an application for that patent.
(2) For the purposes of subsection (1) above the amount of any benefit derived or expected to be derived by an employer from the assignment, assignation or grant of
(a) the property in, or any right in or under, a patent for the invention or an application for such a patent; or
(b) the property or any right in the invention
to a person connected with him shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that person had not been connected with him.
(4) In determining the fair share of the benefit to be secured for an employee in respect of a patent for an invention which has always belonged to an employer, the court or the comptroller shall, among other things, take the following matters into account, that is to say
(a) the nature of the employee's duties, his remuneration and the other advantages he derives or has derived from his employment or has derived in relation to the invention under this Act;
(b) the effort and skill which the employee has devoted to making the invention;
(c) the effort and skill which any other person has devoted to making the invention jointly with the employee concerned, and the advice and other assistance contributed by any other employee who is not a joint inventor of the invention; and
(d) the contribution made by the employer to the making, developing and working of the invention by the provision of advice, facilities and other assistance, by the provision of opportunities and by his managerial and commercial skill and activities."
- Section 43(7) defines "benefit" as meaning "benefit in money or money's worth".
Earlier case law regarding employee compensation
- The law with respect to employee compensation under section 40(1) of the 1977 Act was comprehensively reviewed by Floyd J (as he then was) in Kelly v GE Healthcare Ltd  EWHC 181 (Pat),  RPC 12 at -. I shall follow that exposition, which for the most part I shall take as read. It is nevertheless convenient to quote part of what Floyd J said on the question of "outstanding benefit":
"18. Beyond saying that the benefit must be in 'money or money's worth' see section 43(7) the Act contains no definition of 'outstanding benefit'. In Memco-Med Ltd's Patent  RPC 403, Aldous J (as he was then) said at page 414 lines 7-10:
'The word "outstanding" denotes something special and requires the benefit to be more than substantial or good. I believe that it is unwise to try and redefine the word "outstanding". Courts will recognise an outstanding benefit when it occurs.'
19. I agree that it is not advisable to redefine the word 'outstanding'. In Memco Med Aldous J said that he did not disagree with a statement by the Superintending Examiner in GEC Avionics Limited's Patent (Ellis' Application)  RPC 107, to the effect that the rationale for the use of the word outstanding was that the employee had already been compensated for the invention through remuneration for his employment. The superintending examiner in that case had said at page 115, lines 1-12:
'It is for this reason that the section (section 40) uses the word "outstanding" to qualify the benefit which would make it just that the employee should receive compensation. Moreover it is noted that the word "outstanding" is used rather than "significant" or "substantial" or other such term. It must be something out of the ordinary and not such as one would normally expect to arise from the results of duties that employee is paid for. It is, I think, for this reason that reference is made to the size and nature of the employer's undertaking, and that the benefit (to the employer) must be looked at in the total context of the activities of the employer concerned to see whether it is outstanding."
20. Aldous J also did not disagree with a statement made by a superintending examiner in British Steel PLC's Patent (Monks' Application)  RPC 117 in which it was said that:
'While Mr Tritton was plainly correct in describing "outstanding" as a comparative term, I would regard it as going further than that, implying a superlative.'
21. Quite apart from the problem of a term being both a comparative and a superlative, Aldous J's summary, which I have already set out, does not suggest that he read the statement in Monks' Application as meaning that the benefit has to be 'superlative' in the sense that the benefit is one that could not have been improved upon in some way. There can hardly be a case where the benefit from a patent would satisfy such a test, and I do not believe that the legislator can have intended to create one.
22. Section 40 does not require the Court to value the benefit precisely. The test is a qualitative one, although, as we shall see, in a case where outstanding benefit is shown, section 41 requires the court to secure for the employee 'a fair share of the benefit which the employer has derived from the patent'. In those circumstances it will obviously be necessary to have an idea of the value of the benefit.
23. As a number of decisions have pointed out, it is the benefit of the patent which must (under the section prior to amendment) be outstanding, rather than the benefit of the invention or the benefit of sales of products made in accordance with the invention: see e.g. Memco-Med at 413 lines 14-15. Equally, the notion of outstanding benefit has nothing to do with how inventive the employee was, although the employee's effort and skill are matters which fall to be considered in deciding on the quantum of an award."
- The only other case to which it is necessary to refer is the decision of the Court of Appeal on an interim appeal in this case,  EWCA Civ 1283,  RPC 12. The appeal concerned the interpretation of section 41(2) having regard to the fact that, as explained below, Prof Shanks' employer had assigned the Shanks Patents to associated companies for nominal consideration. The Court of Appeal held that the "benefit derived or expected to be derived" by the employer from the assignment of a patent was deemed to be the amount the employer could reasonably be expected to have derived if the assignee had not been connected, knowing what benefit was in fact obtained from the patent by the actual assignee. Thus, if the actual assignee got £23 million from the patent as pure profit, the answer was £23 million.
Brief summary of the factual background
- The factual background to the present case may be briefly summarised as follows. I shall quote rounded figures rather than the more precise figures given by the hearing officer.
- Prof Shanks was employed by Unilever UK Central Resources Ltd ("CRL") from 5 May 1982 to 3 October 1986. Prior to that, he had been employed by the Royal Signals and Radar Establishment, where his expertise lay in the field of liquid crystals and liquid crystal displays. Prof Shanks was recruited by Unilever to work on process engineering and process control sensors with a focus on biosensors. He was based at Colworth Research Laboratories. It is common ground that Prof Shanks was employed to invent. For this, he initially received £18,000 per annum and a Volvo car, rising to £29,000 and a BMW.
- In July 1982 Prof Shanks visited Professor Anthony Turner and Professor John Higgins at Cranfield University and learnt about the research they were carrying out in the field of biosensors for monitoring diabetes. Although Prof Shanks' brief was to develop biosensors for use in process control and process engineering, rather than in medical diagnostics, he became interested in the possibilities of developing re-usable or disposable devices incorporating biosensors for diagnostic applications. In a report dated 1 August 1982 entitled "Report on new opportunities offered by product sensors" Prof Shanks identified a number of "New product opportunities" one of which was "Sensors for monitoring glucose, insulin or immunoglobulin levels in diabetics. (Control unit + insulin pump + limited re-usability or disposable sensor.)"
- Prof Shanks gave evidence that he had many times filled the 10 microns thick gap between the glass plates of an LCD with liquid crystal simply by placing a droplet on the edge of the cell and relying on capillary attraction to draw the liquid into the gap. He realised that this could be used with other liquids such as blood or urine. He then saw how this technique could be used with etched or printed planar electrodes and the enzyme electrochemical methods of Cranfield to measure glucose concentrations in blood, serum or urine in what was dubbed an Electrochemical Capillary Fill Device ("ECFD"). He said that he built the first prototype ECFD at home in October 1982 using some slides from his daughter's toy microscope kit with some Mylar film as spacers, held together with bulldog clips. Alongside the ECFD, Prof Shanks also developed a Fluorescent Capillary Fill Device ("FCFD").
- CRL employed all of Unilever's UK-based research staff. CRL was not a trading company. CRL was a wholly-owned subsidiary of Unilever plc. Unilever plc and Unilever NV were parallel parent companies of the Unilever Group which were listed on the London and Amsterdam Stock Exchanges respectively, but which were run as a single business.
- It is common ground that, as between Prof Shanks and CRL, the rights to the ECFD invention belonged to CRL pursuant to section 39(1) of the 1977 Act. In accordance with standard Unilever policy, CRL assigned the rights in the invention to Unilever plc for £100. Unilever plc retained the rights for the UK and other territories including Australia and Canada. Unilever plc assigned the rights for the rest of Europe and other territories such as Japan to Unilever NV for £100. Unilever NV assigned the rights for the USA to a company which subsequently changed its name to Unilever Patent Holdings BV. Prof Shanks was asked to sign, and did sign, two confirmatory assignments, for which he received $1 each.
- On 13 June 1984 Unilever plc filed UK Patent Applications 8414018 and 8415019 ("the Priority Documents"). The 018 Priority Document covered the ECFD and FCFD devices, while the 019 Priority Document covered the optical principle of the FCFD. The application for EP375 was filed by Unilever plc (for the UK) and by Unilever NV (for nine other contracting states) on 12 June 1985 claiming priority from the Priority Documents. EP375 was granted on 16 May 1990. Other Shanks Patents were also obtained in Australia, Canada, Japan and the USA. All the Shanks Patents expired on 11 June 2005 except for the US Patent, which expired on 25 August 2009.
- Prof Shanks was the sole named inventor in respect of the Priority Documents, whereas EP375 also named Martin Smith and Claes Nylander as inventors. The hearing officer found that the invention as claimed in the independent claims of EP375, together with some of the subsidiary features, was devised by Prof Shanks alone. Claim 1 was in the following terms:
"A specifically-reactive electrochemical test device, comprising electrodes, and a cavity (1-3, 51-2) having a dimension small enough to enable sample liquid to be drawn into the cavity by capillary action, the electrodes being arranged to contact the liquid, characterised in that the electrode structure (10-11, 61-2) for making one or more measurements of one or more electrically measurable characteristics of the sample is included within said cavity (1-3, 51-2), and in that optionally a surface or wall (51) of the cavity carries a coating (63,83) of a material appropriate to the test to be carried out in the device. "
- Unilever also obtained European Patent No. 0 171 148 and related patents in respect of the FCFD invention ("the FCFD Patents").
- Unilever were not interested in moving into the field of blood glucose testing, which would have involved them in competing with companies which were established in the therapeutic sector, and relatively little was done to develop the ECFD technology after the end of 1984. Both Prof Shanks and Unilever were more interested in the FCFD technology, which had application in other areas, and from 1985 to 1987 work was concentrated on developing this.
- On 13 October 1987 Unilever sold the FCFD technology, including the FCFD Patents, to Ares-Serono Inc. Ares-Serono also took a three-year option on the ECFD technology, but never exercised this option.
- After this, Unilever concentrated on the field of pregnancy and fertility testing. Nevertheless, some further research into glucose testing was carried out between 1987 and 1994, and further patent applications were filed by Unilever, in particular some based on the work of Professor Brian Birch ("the Birch Patents"). Furthermore, the Shanks Patents were maintained.
- The glucose testing market expanded considerably in the late 1990s and 2000s. Biosensors played a key role in this. The ECFD technology eventually appeared in most personal glucose testing products, but it was not the key driver which caused the market to take off. The hearing officer concluded that it was a useful technology that most significant players in the field were willing to pay millions of pounds for the ability to use, but not one that was vital.
- Unilever's main purpose in having patents was to use them to protect an actual business. Cross-licensing of unexploited patents was of secondary importance and out-licensing was third.
- Nevertheless, most of the companies operating in the blood glucose testing field took fully paid-up non-exclusive licences for the remaining life of the Shanks Patents under which the licence fees were payable in instalments. Most of the licensees also took licences under the Birch Patents. These licences were negotiated between 1992 and 2001. Save in one case, the licensees approached Unilever. Even in the exceptional case, Unilever originally approached the licensee for a different reason. A total of seven licences (or sets of licences) were granted by Unilever plc and Unilever NV for a total consideration of £20.3 million. The hearing officer concluded that this figure should be discounted by 5% to reflect the inclusion of the Birch Patents, producing a figure of £19.5 million.
- After leaving Unilever, Prof Shanks was employed by Thorn EMI plc. In 1994 he returned to Unilever, where he remained until 2003, but had little involvement in the licensing of the Shanks Patents. Nor did he develop the technology, or push forward its commercial exploitation, in any other way.
- Along with other patents, management responsibility for the Shanks Patents and the Birch Patents was transferred to Unipath, a subsidiary of Unilever, in 1994. Unipath took on the bulk of Unilever's medical diagnostics business, including successful products in the field of pregnancy and fertility testing, in particular the ClearBlue pregnancy test.
- In December 2001 Unipath, including the Shanks Patents and the Birch Patents, was sold to Inverness Medical Innovations (IMI) for £103 million. The sale agreement provided for IMI to receive expected licence payments from one of the licensees of £2.9 million. It was agreed that this sum should be treated as part of the benefit obtained by Unilever from the Shanks Patents, subject to a discount for the value of the Birch Patents, which the hearing officer again assessed at 5%. In addition, the hearing officer applied a further 5% discount for the credit risk that the licensee might not pay, producing a figure of £2.6 million. The hearing officer also concluded that part of the purchase price paid by IMI for Unipath was attributable to the Shanks Patents. He assessed this at £2.4 million.
- Thus the total gross benefit which the hearing officer found Unilever to have obtained from the Shanks Patents was £24.5 million. He assessed the costs incurred by Unilever in prosecuting, maintaining and licensing the Shanks Patents at £250,000, giving a total net benefit of £24.3 million. He went on to conclude that this was not an outstanding benefit for reasons I will consider below. He also concluded that, if the benefit was outstanding, a fair share for Prof Shanks would be 5%. Again, I shall consider his reasons below.
The role of the appeal court
- The role of the appeal court was recently reviewed by Lewison LJ in Fine & Country Ltd v Okotoks Ltd  EWCA Civ 672,  FSR 11, where he said:
"50. The Court of Appeal is not here to retry the case. Our function is to review the judgment and order of the trial judge to see if it is wrong. If the judge has applied the wrong legal test, then it is our duty to say so. But in many cases the appellant's complaint is not that the judge has misdirected himself in law, but that he has incorrectly applied the right test. In the case of many of the grounds of appeal this is the position here. Many of the points which the judge was called upon to decide were essentially value judgments, or what in the current jargon are called multi-factorial assessments. An appeal court must be especially cautious about interfering with a trial judge's decisions of this kind. There are many examples of statements to this effect. I take as representative Lord Hoffmann's statement in Designers Guild Ltd v Russell Williams (Textiles) Ltd  1 WLR 2416, 2423:
'Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle.'
51. Where the appeal is (or involves) an appeal against a finding of fact, the role of an appeal court is as stated by Lord Mance in Datec Electronics Holdings Ltd v United Parcels Service Ltd  UKHL 23  1 WLR 1325 at  approving a passage from the judgment of Clarke LJ in Assicurazioni Generali SpA v Arab Insurance Group  1 WLR 577, 580 581 as follows:
'14. The approach of the court to any particular case will depend upon the nature of the issues kind of case determined by the judge. This has been recognised recently in, for example, Todd v Adams & Chope (trading as Trelawney Fishing Co)  2 Lloyd's Rep 293 and Bessant v South Cone Inc  EWCA Civ 763. In some cases the trial judge will have reached conclusions of primary fact based almost entirely upon the view which he formed of the oral evidence of the witnesses. In most cases, however, the position is more complex. In many such cases the judge will have reached his conclusions of primary fact as a result partly of the view he formed of the oral evidence and partly from an analysis of the documents. In other such cases, the judge will have made findings of primary fact based entirely or almost entirely on the documents. Some findings of primary fact will be the result of direct evidence, whereas others will depend upon inference from direct evidence of such facts.
15. In appeals against conclusions of primary fact the approach of an appellate court will depend upon the weight to be attached to the findings of the judge and that weight will depend upon the extent to which, as the trial judge, the judge has an advantage over the appellate court; the greater that advantage the more reluctant the appellate court should be to interfere. As I see it, that was the approach of the Court of Appeal on a 'rehearing' under the RSC and should be its approach on a 'review' under the CPR 1998.
16. Some conclusions of fact are, however, not conclusions of primary fact of the kind to which I have just referred. They involve an assessment of a number of different factors which have to be weighed against each other. This is sometimes called an evaluation of the facts and is often a matter of degree upon which different judges can legitimately differ. Such cases may be closely analogous to the exercise of a discretion and, in my opinion, appellate courts should approach them in a similar way.'
52. I would add to that citation the statement of Lord Steyn in Smith New Court Securities Ltd v Citibank NA  AC 254, 274:
'The principle is well settled that where there has been no misdirection on an issue of fact by the trial judge the presumption is that his conclusion on issues of fact is correct. The Court of Appeal will only reverse the trial judge on an issue of fact when it is convinced that his view is wrong. In such a case, if the Court of Appeal is left in doubt as to the correctness of the conclusion, it will not disturb it.'
53. This corresponds with the test under CPR Part 52.11(3)(a)."
- I would add that the Comptroller-General of Patents is a specialist tribunal, and therefore the warning given by Baroness Hale of Richmond in AH (Sudan) v Secretary of State for the Home Department  UKHL 49,  1 AC 678 at , which was approved by Sir John Dyson SCJ giving the judgment of the Supreme Court in MA (Somalia) v Secretary of State for the Home Department  UKSC 49,  2 All ER 65 at , is apposite in this context:
This is an expert tribunal charged with administering a complex area of law in challenging circumstances. To paraphrase a view I have expressed about such expert tribunals in another context, the ordinary courts should approach appeals from them with an appropriate degree of caution; it is probable that in understanding and applying the law in their specialised field the tribunal will have got it right: see Cooke v Secretary of State for Social Security  3 All ER 279, para 16. They and they alone are the judges of the facts. It is not enough that their decision on those facts may seem harsh to people who have not heard and read the evidence and arguments which they have heard and read. Their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts or expressed themselves differently.
The structure of the hearing officer's analysis
- In Kelly Floyd J was able to conclude that the patents were of outstanding benefit to the employer (at -) and that it was just to make an award to the employees (at -) before he quantified the benefit the employer had obtained from the patents (at -) and decided what would be a fair share for the employees (at -). In the present case, the hearing officer, after having made his general findings of fact, first quantified the benefit which Unilever had received (at -), then considered the employer's undertaking (at -), then decided whether the benefit was outstanding (at -) and finally considered what a fair share would be if the benefit was outstanding (at -). Unilever conceded that, if the benefit was outstanding, it would be just to make an award, and so the hearing officer did not have to consider that question.
- Neither side criticised the hearing officer for approaching the matter in that way, and in the circumstances of the present case it made obvious sense, for two reasons. First, it is implicit in the Court of Appeal's decision that, at least in the present case, the "benefit to the employer" in section 40(1) is to be assessed in the same manner as the "benefit which the employer has derived
from the patent
or the assignment" in section 41(1), that is to say, by looking at the benefit obtained by Unilever. Secondly, in the present case, it is possible to quantify the benefit derived by Unilever from the Shanks Patents relatively precisely, even though there is disagreement as to what the right answer is. Accordingly, I shall adopt the same approach when considering the issues raised on the appeal.
What was the benefit to Unilever?
- Both sides challenge the hearing officer's conclusion that the benefit which Unilever derived from the Shanks Patents was £24.5 million. Prof Shanks contends that the hearing officer ought to have included an additional sum to reflect the time value of the money to Unilever. Unilever contend that the hearing officer ought to have reduced the total to reflect (i) the incidence of tax, (ii) research and development costs and (iii) a greater percentage of the licensing income being attributable to the Birch Patents. The contentions with regard to the time value of money and tax raise issues of principle which do not appear to have been considered in this context before this case.
Time value of money
- Unilever received payments of licence fees under the Shanks Patents over the period from 1996 to 2004. They received the part of the purchase price of Unipath attributable to the Shanks Patents in 2001. Prof Shanks commenced his claim on 9 June 2006. It did not reach a hearing until 26 March 2012, and the decision followed nearly a year after the hearing concluded on 2 May 2012. Prof Shanks contends that, during the period from the dates of receipt of the money by Unilever until the date of the decision, Unilever had the use of the money and that was in itself an economic benefit to Unilever which should be taken into account. Prof Shanks advances four alternative methods of quantifying this benefit: (i) on the basis of Unilever's own return on invested capital; (ii) on the basis of investment in Unilever plc shares; (iii) on the basis of interest at the Bank of England base rate; and (iv) on the basis of the change in the value of the money applying the Retail Price Index.
- It is important to be clear as to Prof Shanks' purpose in advancing this contention. Counsel for Prof Shanks expressly accepted that a benefit which was not outstanding at the date(s) of receipt would not become outstanding merely because of the passage of time, and the recipient's consequential ability to use the money during that period. Thus Prof Shanks does not rely upon this contention as a basis for attacking the hearing officer's conclusion as to whether the benefit was outstanding. Rather, Prof Shanks' purpose in advancing it is to increase the quantum of the benefit of which he should receive a fair share if he is successful in overturning the hearing officer on the question of outstanding benefit. Thus the issue arises under section 41(1), rather than under section 40(1). Given the hearing officer's approach discussed above, however, it is convenient to consider the issue at this stage.
- The hearing officer rejected this contention at  for the following reason:
any increase of the benefit on this account would have to be matched by an equal percentage increase to the rest of Unilever's income that it is being compared to. I see this as a needless complication that would add nothing to the comparison."
- Counsel for Prof Shanks submitted that the time value of money was a benefit in money's worth, and thus fell squarely within the definition of "benefit" in section 43(7), and was a benefit which was capable of being quantified. He also sought to draw an analogy between the present case and Sempra Metals Ltd v Inland Revenue Commissioners  UKHL 34,  1 AC 561. In that case the House of Lords held that the claimant taxpayer could recover the time value of money which was prematurely paid in tax under a tax regime that was unlawful under European law. HMRC conceded that it was liable to pay simple interest, but the claimant sought compound interest on three different bases: (i) damages for breach of statutory duty, (ii) restitution of money paid pursuant to an unlawful demand and (iii) restitution of money paid under a mistake of law. The House of Lords agreed that the claimant was entitled to compound interest, although extracting the precise ratio of the decision from the speeches is not easy.
- It is common ground that Sempra Metals is not directly applicable to the present case. Prof Shanks makes no claim for damages for breach of statutory duty, nor any claim for unjust enrichment. Rather, he is making a claim under a sui generis statutory regime for an order that he should be awarded a share of the benefit obtained by his former employer (or, more strictly, the employer's assignees) from patents which belonged to the employer. The way in which counsel for Prof Shanks sought to rely upon Sempra Metals was as a recognition at the highest level of the principle that the time value of money was something that was recognised by the law and the financial value of which could be assessed.
- Counsel for Unilever did not take issue with that general principle. As he submitted, however, it does not necessarily follow that the time value of money constitutes "benefit" as a matter of the construction of a particular statute. For example, in BP Exploration Co (Libya) Ltd v Hunt (No 2)  1 All ER 925 at 941 Robert Goff J held that the time value of money did not constitute "benefit" for the purposes of section 1(3) of the Law Reform (Frustrated Contracts) Act 1943. His decision on this point was affirmed by the Court of Appeal, and the point was not pursued in the House of Lords.
- Accordingly, the issue is one of construction of the words "the benefit of which the employer has derived
from the patent" in section 41(1). It is common ground that, by virtue of section 41(2) and the decision of the Court of Appeal, the benefit which the employer has derived from the Shanks Patents can be equated with the benefit that Unilever have derived from them.
- In my judgment the time value of the money which Unilever have received is not a "benefit
from" the Shanks Patents within the meaning of section 41(1). My reasons are as follows. First, the fact that having money for a period of time is of an economic value which can be quantified does not compel the conclusion that it constitutes "money's worth" within the meaning of the definition of "benefit" in section 43(7). On the contrary, when read together with section 41(1), the definition points to the benefit being assessed when the "money or money's worth" is received by the employer.
- Secondly, even if the time value of the money is a "benefit", it is not a benefit "derived from" the Shanks Patents. The benefits derived from the Shanks Patents were the licence fees and the attributable part of the purchase price of Unipath. The time value of the money is a benefit derived from those benefits. This point can be illustrated in two ways. The first is by imagining that a patent is sold by £1 which the employer invests in a lottery ticket that wins a prize of £10 million. Can the employee claim the £10 million as a benefit derived from the patent? The second is by imagining that a patent is sold for £100 million which the employer invests in setting up a new company which crashes disastrously, resulting in the loss of the entire sum. Can the employer say that it has received no benefit from the patent? Surely the answer to both questions is no.
- Thirdly, if the time value of money received is treated as a benefit derived from the patent, the inquiry under section 41(1) would have no temporal end, particularly where the employer was able to get a better rate of return on investing its share of the money in its own business than the employee could get from a market interest rate on his share (or perhaps even from investing his share in the stock market). It would also complicate the inquiry in other ways which Parliament is unlikely to have envisaged, not least in determining which of the available methods of quantifying the time value is the most appropriate.
- Fourthly, Prof Shanks could have brought his claim earlier than he did. Why should the "benefit
the patent" increase as a result of a delay by the employee in bringing his claim? Furthermore, it took a regrettably long time for the Comptroller-General to determine the claim. Again, why should the "benefit
the patent" increase as a result? Yet further, this appeal has taken a year to come on. Again, why should the "benefit
the patent" increase as a result? Surely the answer to these questions is that such delays do not alter the benefit to the employer.
- Fifthly, it is common ground that the Comptroller has no power to award interest. In my judgment it would be inconsistent with the statutory scheme for the benefit to be increased to reflect the time value of money effectively as a substitute for an award of interest. It is not necessary to try to decide what the position with regard to interest would have been if Prof Shanks had brought his claim in this Court.
- Unilever contend that, in order to determine the benefit which Unilever received from the Shanks Patents, the gross sums they received should be discounted to reflect the fact that they paid corporation tax on those receipts. Unilever's expert Dr Osborn quantified the appropriate reduction at 30% on the basis that this was the average rate of corporation tax paid by Unilever during the relevant period calculated from their statutory accounts.
- The hearing officer rejected this contention at  for the following reasons:
. Dr Osborn's approach appeared too arbitrary to be justified, and I was particularly unconvinced by his failure to discount losses made in years that no income was received on the grounds that Unilever overall was profitable and so paid tax in those years. That may be so, but equally it would have saved some tax payment on his logic as a result. (This particular point does not have a direct effect as I held above that costs should not in fact be taken into account and so these losses and tax savings were not relevant but it well illustrates the arbitrariness of his calculation). In particular, for the purpose of determining whether the benefit was outstanding, the comparators, as near as I could discern, did not appear to have taken tax into account. I further note that in Kelly, which looked at sales values for the relevant products, no account seems to have been taken of tax."
- Counsel for Unilever argued that, as a matter of financial reality and legal principle, the "benefit which the employer has derived
from the patent" must take into account the tax paid by the employer on his receipts. Tax paid to the State is not a benefit to the employer. As counsel pointed out, if the State decided to tax sums received from licensing and/or selling patents which the patentee did not itself practice at a rate of 100%, then an employer who only obtained revenue from that source would receive no benefit at all from the patents.
- In support of this argument, counsel for Unilever relied upon an authority which he had not cited before the hearing officer, namely Celanese International Corp v BP Chemicals Ltd  RPC 203. In that case Laddie J held at - that, in the context of an account of profits for patent infringement, the profits which had to be disgorged by the infringer were the profits net of the corporation tax which it had paid. Counsel submitted that there was a clear parallel between determining profits for the purpose of an account and determining benefit for the present purpose.
- Counsel for Prof Shanks sought to meet the argument based on the hypothetical 100% tax by contending that, in principle, tax paid by the employer was a matter which could be taken into account when determining whether it was just to make an award or in determining the employee's fair share. He did not accept that it was appropriate to do so in the present case, however. In any event, this argument does not avoid the need to consider whether Unilever is correct that tax should be taken into account when determining the benefit derived by the employer from the patent.
- As for Celanese, counsel for Prof Shanks pointed out that in that case Laddie J proceeded on the basis that the tax was irrecoverable, although he ordered that the infringer should disclose any attempt to recover the tax and account to the patentee for any recovery. Furthermore, there does not appear to have any consideration of the patentee's tax position. Counsel for Prof Shanks argued that the burden lay on Unilever to prove that (i) the tax paid on receipts from the Shanks Patents was irrecoverable and (ii) any award would not be taxable in Prof Shanks' hands. In support of this argument, he relied upon the decision of the Court of Appeal in Stoke-on-Trent City Council v Wood Mitchell & Co Ltd  1 WLR 254.
- As counsel for Unilever submitted, however, Stoke-on-Trent is concerned with a different issue, which is the application of the principle established by the decision of the House of Lords in British Transport Commission v Gourley  AC 185. Gourley establishes that an award of damages to a claimant will be reduced where (i) the sums the loss of which the claimant is being compensated for by the award of damages would have been subject to tax, but (ii) the damages will not themselves be subject to tax. This is to avoid the claimant being overcompensated. Stoke-on-Trent establishes that it is for the defendant who wishes to rely upon the Gourley principle to prove factor (ii). I would add that in Finley v Connell Associates  Lloyds Rep PN 62 at  Ouseley J held that the onus lay upon the defendant to prove factor (i) as well.
- In the present case, however, Unilever do not contend that an award to Prof Shanks should be reduced because Prof Shanks would have had to pay tax on the benefits derived from the Shanks Patent, but Prof Shanks will not have to pay tax on any award. Unilever's contention is quite different, namely that in determining the benefit derived by Unilever from the Shanks Patents, it is necessary to take into account the tax paid by Unilever.
- So far as Unilever's tax position is concerned, counsel for Prof Shanks pointed out that Dr Osborn had agreed in cross-examination that Unilever could set off any payment to Prof Shanks against future corporation tax payments. Counsel accepted, however, that Unilever could not recover tax on the share of the benefit it retained. Thus it is only necessary to consider the potential impact of the award on Unilever's tax position. In my judgment, if Prof Shanks wanted to rely on this, then the burden lay on Prof Shanks to adduce evidence which established what the impact would be. He did not do so. Nor did Prof Shanks invite the hearing officer to offset this against any deduction of corporation tax from the gross benefit. In any event, the effect of this factor depends on the size of the award. The lower the award, the less this factor needs to be taken into account.
- As for Prof Shanks' tax position, neither side suggested that there was any reason why an award would not be taxable in his hands. Accordingly, although there is no evidence on the point, it seems reasonable to assume Prof Shanks will be liable for tax. In my judgment this is irrelevant to the assessment of the benefit received by Unilever from the Shanks Patents.
- I conclude that Unilever are correct that, in the circumstances of this case, the benefit derived by Unilever from the Shanks Patents is the benefit net of tax. I disagree with the hearing officer's view that Dr Osborn's approach to quantifying the tax paid by Unilever was an arbitrary one. On the contrary, I consider it sensible and proportionate. It is true that Dr Osborn did not take Unilever's costs into account, but on the hearing officer's own findings those costs were very modest. Moreover, one can make a rough and ready adjustment for this by applying the discount for tax to the figure net of costs. Accordingly, subject to the points considered below, the total net benefit derived by Unilever from the Shanks Patents is £17 million. This represents an average of a little over £2 million per annum over the eight year period in which Unilever received licence fees in respect of the Shanks Patents. It represents less than £1 million per annum over the life of EP375.
Research and development costs
- The hearing officer accepted (at -) Unilever's evidence that the research and developments costs attributable to the ECFD technology from 1984 to 1994 were £1.75 million. He also found (at ) that the costs of filing, prosecuting, maintaining and licensing the Shanks Patents were £250,000. In determining the net benefit derived by Unilever from the Shanks Patents, he deducted the latter figure, but not the former.
- In Kelly Floyd J held as follows
"130. Mr Purvis submitted firstly that the evidence established that, without patent protection, the Heart Project would not have gone ahead at all, and that one can therefore ascribe all the profits of Myoview to the patents.
131. I think this argument, which even Mr Purvis was inclined to describe as 'nihilistic', is bad. It fails to account for the fact that the patents were just one of the causes of Myoview's success, and fails to provide any basis for apportioning the profits between the multiple causes.
132. I think a much better way of isolating the actual benefit which it is possible to ascribe to the patents, as opposed to other causes, is to assume that Myoview has gone ahead, but unprotected by patents, and compare an estimate of how it would have performed with the actual profits."
- The hearing officer concluded that the same approach applied here, for the following reasons:
Certainly, the sums of money that Unilever invested in the invention are by the defendants' own account of the order of £2 million which by their own submission is not a large sum by Unilever's standards, and I saw no real suggestion in the evidence that a lack of a patent would have meant no pursuit of research in this area. What I should therefore do, as Floyd J did in Kelly, is assume that the work had gone ahead, but there were no Shanks patents, and consider how Unilever's income would have been affected.
183. This is far more straightforward than it was in Kelly. Without the patents, the licensing income and benefit from the Unipath sale would have been zero all the income determined is directly attributable to the patents. Equally, the expenditure on licensing and related work would not have taken place, so these costs should be deducted from the benefit. The other work would have happened anyway by the above hypothesis, so the cost of doing so should not be deducted from the benefit.
- Counsel for Unilever submitted that this analysis was flawed, because in Kelly regulatory data exclusivity meant that it was plausible to assume that Amersham would have developed Myoview without patent protection, whereas the hearing officer was not justified in concluding that Unilever would have pursued research and development of the ECFD technology without a patent. The hearing officer found as a fact that the work would have been undertaken without a patent, however. I am not satisfied that that finding was wrong, particularly since counsel for Unilever did not show me any evidence which demonstrated that it would not have been undertaken.
The Birch Patents
- As noted above, the hearing officer discounted the revenue received by Unilever under the licences and a result of the sale of Unipath by 5% to allow for the fact that most of the licences included the Birch Patents. The hearing officer expressed his reasons for doing so at  as follows:
"I prefer the evidence of Mr Emanuel. Dr Osborn's approach to this question is rather sweeping and is primarily based on an assertion, without specific reasoning, that on reading the licensing files he came to the view that 20-25% was an appropriate value but he settled on a 'conservative' 15% in light of one licensee (Company D) reducing their payment when they decided they did not want the Birch patents. Mr Emanuel, by contrast, analysed the licences on an individual basis, and made more comprehensive comparisons between what the different licensees were willing to pay with the Birch patents included with a final price agreed with them excluded."
- Counsel for Unilever submitted that the hearing officer was wrong to prefer the evidence of Mr Emanuel (Prof Shanks' expert) to that of Dr Osborn, and therefore should have discounted the revenue by 15%. He made a number of points in support of this submission, of which perhaps the strongest was that Dr Osborn's analysis was supported by a contemporaneous email dated 8 November 2001 recording that Company D had offered a lower sum as a result of deciding not to take a licence under the Birch Patents. The hearing officer had the advantage of reading the experts' reports and seeing them cross-examined on the reports and the contemporaneous documentation, however. I have not had that advantage. I am not persuaded that the hearing officer was wrong to reach the conclusion that he did.
The employer's undertaking
- Section 40(1) requires the tribunal to consider whether the patent was of outstanding benefit to the employer "having regard among other things to the size and nature of the employer's undertaking". What is the relevant undertaking in the circumstances of this case? Prof Shanks contends that is (i) the Measurement Control and Automation Section of, alternatively (ii) the Process Engineering Division of, alternatively (iii) the Colworth Laboratory, alternatively (iv) CRL, alternatively (v) Unipath. Unilever contends that it is the Unilever group as a whole.
- The hearing officer agreed with Unilever for reasons he expressed at  as follows:
"In the event, on the facts of this case I find that the reality of the situation is that described by the defendants: regardless of how the various companies in the Unilever group have been structured, researchers at Colworth (employed by CRL) were doing work which was going to be exploited by the group as a whole. Indeed, it is notable that the whole benefit from the Shanks patents was generated by licensing activity operated out of the central Unilever companies. Having regard to the size and nature of the employer's undertaking therefore requires me to have regard to whether the benefit from the patents is outstanding in the context of the Unilever group as a whole."
- Prof Shanks challenges this conclusion. Counsel for Prof Shanks submitted that the starting point was that it was common ground that Prof Shanks' employer was CRL and that it followed from the language of section 40(1) that the court's task was to identify the relevant undertaking of that employer. That could be a subdivision of the employer's business, but it could not be the business of a group of which the employer formed only a small part.
- In my judgment the hearing officer's reasoning on this issue is unimpeachable. Indeed, I would go further. In my view the logic of the Court of Appeal's decision drives one inexorably to the conclusion that the hearing officer reached. As I have pointed out, the effect of the Court of Appeal's decision is to equate the benefit of the Shanks Patents to Prof Shanks' employer with the benefit received by Unilever plc and Unilever NV. It must follow that the relevant undertaking was Unilever plc and Unilever NV.
Was the benefit outstanding?
- The hearing officer addressed the question of whether the benefit was outstanding in his decision at -. He considered the benefit from a number of different perspectives: in the light of Unilever's profits and turnover; in relation to patents in general; in the context of Unilever's licensing activities; in view of Unilever's patent activities; and compared to Unilever's activities in general. The hearing expressed his overall conclusion as follows:
"222. Considering the totality of the evidence, I was left with a clear impression. The benefit provided by the Shanks patents was a substantial and significant one in money terms the sort of sum Unilever would, on the evidence, worry about (cf. Project Hyacinth). Furthermore, in comparison to the benefit from other patents to Unilever, from the evidence before me it does, in Mr Emanuel's words 'stand out'. But Unilever makes profits at an order of magnitude greater on other inventions albeit primarily by manufacture and at a much lower rate of return than was provided by the Shanks patents. Further, this is not such a case as Kelly, where Floyd J held that without the patents in that case, Amersham would have faced a crisis. There was no suggestion from either party that the Shanks patents were crucial to Unilever's success.
223. In my view, taking account of the size and nature of Unilever's business, the benefit provided by the Shanks patents falls short of being outstanding."
- Prof Shanks challenges the hearing officer's conclusion that the benefit was not outstanding on no less than seven grounds, some of which overlap with each other, but several of which sub-divide into a number of points. It is important to note that it was common ground before me, as it was before the hearing officer, that, as Floyd J held in Kelly at , the test of outstanding benefit is a qualitative one. In my judgment it is clear that the hearing officer's decision was a value judgment involving a multi-factorial assessment. Accordingly, it should not be disturbed unless I am satisfied that he has made a distinct and material error of principle. I shall therefore concentrate on the principal criticisms made of the hearing officer's reasoning.
Too big to pay
- Prof Shanks' first main criticism is that, in essence, the hearing officer decided that the benefit which Unilever obtained from the Shanks Patents was not outstanding because of the large profits which Unilever ordinarily made in the course of its business. Counsel for Prof Shanks submitted that this was an error of principle because it amounted to saying that Unilever were too big to pay employee compensation, which could not be a correct approach to section 40(1).
- In support of this submission, counsel for Unilever relied upon the obiter remarks of Jacob LJ in the Court of Appeal decision at  (emphasis added):
"Unilever were (and according to Mr Alexander still are) contending that although £23m royalties might be a lot for some companies, by Unilever standards it is not a lot and so the patent was not of outstanding benefit to Unilever. He pointed to the words in s.40(1) 'having regard to the size and nature of the employer's undertaking', suggesting they meant that inventor/employees of big companies had to show a larger benefit to their employer than inventor/employees of smaller companies. I am far from convinced that Parliament meant that inventor/employees of large companies should get less or no compensation for a particular invention compared with what they would get if they had been employed by a small company. It may indeed be the other way round in that a large payment may be too much for a small company to able to afford and that was what Parliament had in mind. The point does not immediately arise the Comptroller will have to consider it in due course if it is persisted in."
- I would observe that in the two sentences I have italicised Jacob LJ seems to have conflated the question of whether there is an outstanding benefit under section 40(1) and the question of what would be fair share for the employee under section 41(1). Nevertheless, I accept that it would not be correct to construe section 40(1) as meaning that, if the employer's undertaking is large and profitable, no benefit can be outstanding however large it is. Nor did counsel for Unilever submit to the contrary.
- The hearing officer dealt with this point as follows:
"201. The defendants argued that in context the benefit was clearly not outstanding. To make this point, Mr Alexander submitted a graph illustrating revenue from the Shanks patents compared to Unilever's overall profits, together with the remark 'The Comptroller may be wondering why the bars for the licence income and the sum attributed to the Unipath sale in the years 1996 to 2004 can hardly be seen. Nothing has gone wrong with the printing. Even with an elongated y axis, they are so small as to be virtually invisible and for the majority of its life there was no annual income realised at all'. Less colourfully, Dr Osborn made a number of comparisons on the benefit as a percentage of Unilever's and CRL's profits, turnover, or R&D budget either considered over the lifetime of the Shanks patents, the years in which licensing income was received, or considered relative to a single year. He was using a value of the benefit about half what I have found above, but the essential point is the same as Mr Alexander's.
202. Mr Samuel took this line in his evidence, stating that a £18 million additional write-down had not required a restatement of the accounts and that £23 million is not even material at management group level. In my view, he somewhat overstated his case and was challenged in cross-examination being shown evidence of top-level Unilever management being concerned about losses of £15 million in another context ('Project Hyacinth') which he admitted being surprised by. However, I have no difficulty finding that the size of benefit being considered in this case is small compared to Unilever's overall profits. But that does not mean that Mr Alexander's argument immediately carries the day.
203. Mr Green characterised Mr Alexander's approach as 'too big to pay'. He argued that given the size of companies such as Unilever, on one level it would be impossible for any benefit to be 'outstanding' in the context of profits of hundreds of millions of pounds and more. An approach such as urged by the defendants would inevitably mean that any claim against a large company would fail, and it was impossible that this was the legislature's intention.
Mr Green also referred to the comments of Jacob LJ in the Court of Appeal's judgment in Shanks v Unilever, where he had thought it unlikely that a large company could escape liability in such a way.
207. I agree with Mr Green to the extent that I think it is too simplistic to simply look at overall turnover, or profits, of an employer's undertaking and then simply state that a given benefit is a small percentage of that. At the same time, it is necessary, as the statute says, to take account of the size and nature of the employer's undertaking. Different undertakings will have different leverage to be able to make more or less benefit out of their activities. I see this as being illustrated by Mr Emanuel's comment in evidence that £50,000 would be an excellent return for a small company to get from licensing its patents. Clearly, that would not be an excellent return for Unilever, which by its nature, for example by being able to contemplate greater expenditure on litigation, is able to get higher returns in negotiations than a smaller entity would, as Mr Emanuel conceded. So it seems totally logical to me that a given monetary benefit might be outstanding for a small entity, but not for a larger one.
208. Ultimately, I do not think this reduces to a simpler test than that laid down in the statute it is a matter of looking at the benefit in the overall context and determining whether in view of all the facts the benefit to the employer was outstanding. Sometimes that might be because of the benefit being in fact a large portion of the employer's profits or turnover. Other times it may be possible to see the outstanding nature from the effect it had for example in Kelly, where Floyd J is able to determine the benefit is outstanding before determining its precise value in money terms."
- In my judgment it is clear both from this passage and from his subsequent reasoning leading to his conclusion in  that the hearing officer did not make the error he is accused of. He did not decide that Unilever was too big to pay or that no benefit could be outstanding however large because of the size and nature of Unilever's business. Nor did he decide that £24.5 million was not an outstanding benefit simply because it was an arithmetically small sum compared to Unilever's profits over the same period. On the contrary, the hearing officer undertook a multi-factorial assessment which including having regard to the size and nature of the relevant undertaking, as the statute required him to do.
- Professor Shanks' second criticism concerns the disparity between what he received from the Shanks Patents and what Unilever received. The hearing officer dealt with this at  as follows:
"The claimant makes an initial point regarding Floyd J's holding in Kelly that under section 41(1) the employee will only succeed where, with the benefit of hindsight, the disparity in benefit between employee and employer is extreme. The claimant argues that this is surely satisfied as Unilever have received tens of millions of pounds and Professor Shanks nothing more than his contracted remuneration and £100 assignment fee. In simple numerical terms, this is plainly so, but I do not read Floyd J as meaning to create an alternative test to 'outstanding'; there is a need to consider the disparity in the overall context of the size and nature of the employer's undertaking."
- Leaving aside the minor point that the £100 was received by CRL, not Prof Shanks, counsel for Prof Shanks submitted that the hearing officer had fallen into error because, although he had accepted that there was an extreme disparity in benefit in simple numerical terms, he had failed to take this into account when reaching his final conclusion at . I do not accept this submission. There is no reason to think that, having accepted this point, the hearing officer forgot about it in the remainder of his reasoning. Rather, the hearing officer considered the benefit received by Unilever, and hence the disparity in that benefit from the benefit received by Prof Shanks, in the context of the size and nature of Unilever's undertaking.
How the benefit was obtained
- Prof Shanks' third criticism concerns the manner in which the benefit was obtained. As described above, the way in which Unilever obtained benefit from the Shanks Patents was primarily by licensing them, and to a rather lesser extent by selling them, whereas it normally exploited patents by manufacturing. The hearing officer considered the relevance of this as follows:
"213. In the context of Unilever's business, which is in making products and not substantially engaging in patent licensing, Mr Emanuel agreed in cross-examination that if it gets any significant level of fees from the odd patent license, that is always going to be unusual because that is not its business, and he commented that if it is a substantial amount of money then it is remarkable. It would 'stand out'. He emphasised that Unilever don't normally do this, but on this occasion, not only did they do it but they made 'a ton of money' out of it.
214. There was scant evidence in relation to Unilever's other licensing activities. In particular, no examples were provided of other licensing deals which have provided Unilever with income at or above the levels of the Shanks patents. Dr Mulder's evidence was that Unilever is not a licensing out company but rather a company focussed on products. It therefore seems, as Mr Emanuel said, that the Shanks patents could 'stand out' in terms of the licensing income they have brought in.
215. It does not however follow that the benefit, in money or money's worth, is outstanding. On this I agree with the point Mr Alexander put forward, which was that how the benefit was made is not relevant to whether it is outstanding what matters is whether the benefit in money or money's worth is outstanding in the context of the undertaking as a whole. Just because a company does not usually make money in a certain way does not mean that any sum, no matter how small relative to the size of the company's usual business, is of outstanding benefit for it."
- Counsel for Prof Shanks submitted that the hearing officer was wrong to conclude that how the benefit was obtained was irrelevant, since it was plainly relevant to a qualitative assessment of whether the benefit was outstanding, consistently with the requirement to have regard to the nature of the employer's undertaking as well as it size. I do not accept this submission. In my judgment the hearing officer was correct to conclude that the mere fact that the employer received benefit from the patents in a manner which was unusual for that employer, and hence in an amount which the employer did not usually receive in that way, is not in itself an indication that the benefit was outstanding.
Commercial risk and rate of return
- Prof Shanks' fourth criticism concerns the absence of commercial risk and the high rate of return. It can be seen from the hearing officer's findings that Unilever obtained benefit from the Shanks Patents with very little commercial risk and at a very high rate of return. It is common ground that Unilever's average rate of return on invested capital during the period in question was about 11% per annum. Even net of tax, the sums which Unilever received represent a rate of return on the costs of £250,000 which the hearing officer found to have been expended vastly in excess of that.
- The hearing officer dealt with this as follows:
"219. Dr Mulder in his evidence, in a part he was not challenged on, identified a number of highly successful products manufactured by Unilever, including Vienetta ice cream, spreads and deodorants. He referred to incomes of 'many billions of pounds' over the lifetime of the patents protecting the products, 'with profits over the same period of at least many hundreds of millions of pounds.' I believe that this gives some indication of the sorts of benefits generated by highly successful products, and so the sorts of sums which can be considered to be of great benefit to Unilever, which are an order of magnitude greater than the benefit in this case.
220. There is one noticeable difference between the benefit in cases such as Vienetta and the present case: the amount spent by Unilever to get the benefit. Profits of 'hundreds of millions' on revenues of 'billions' necessarily implies expenditure in the hundreds of millions. In this case, even on the defendants' case, the expenditure was no more than around £2 million. Under my own approach, which is to look at the benefit of the patent, even most of those costs can be ignored, giving a very high rate of return. I agree with the suggestion from the claimant that this is relevant in his favour, but bear in mind that under this approach all successful patents will have a high rate of return, and a small sum generated by a still smaller sum is still a small sum."
He also referred to the "much lower rate of return" normally obtained by Unilever in reaching his final conclusion at .
- This is the point which has troubled me most about the hearing officer's assessment of whether the benefit was outstanding, since the very high rate of return obtained by Unilever from the Shanks Patents is a striking feature of the present case. Nevertheless, I see no error of principle in the hearing officer's approach which would justify my intervening in his decision. He accepted that the high rate of return was a factor in Prof Shanks' favour, and he took that into account in reaching his overall conclusion. The weight to give this factor was a matter for him.
The context of the Unilever group
- Prof Shanks' fifth criticism is that the hearing officer was wrong to conclude that the benefit was not outstanding in the context of the Unilever group as a whole given his own findings. In this context counsel for Prof Shanks relied upon a number of different points. Some of these are repetitions of points I have already considered, such as the nature of the undertaking, the way in which the benefit was obtained and the high rate of return, or which are considered below. It remains to consider one other point.
- This is the extent to which Prof Shanks exceeded his brief in making the ECFD invention. The hearing officer found at  that:
"On balance I conclude that Professor Shanks was made to understand that he should not stray too far from his brief of biosensors for process control and process engineering, although he was given a wide remit within this brief. I however believe that he did have at least some freedom to develop his ideas in other areas, even if the level of interest for these ideas within Unilever was in question, a point I come back to below."
- In essence, counsel for Prof Shanks argued that this amounted to a recognition that, in making the ECFD invention, Prof Shanks had gone beyond his brief (albeit not beyond his contractual duties, which were widely defined) and that this was a factor which the hearing officer ought to have taken into account. I do not accept this argument. In my judgment this is not a matter which is relevant to the question of whether the benefit to the employer is outstanding.
The value of Unilever's other patents
- Prof Shanks' sixth criticism concerns the value attributable to Unilever's other patents. The hearing officer dealt with this as follows:
"216. In an effort to assess the benefit obtained from the Shanks patents to that from other patents owned by Unilever, Dr Mulder provided some evidence in relation to patent value and patent metrics based on an attempt he had made some years previous to 'value' Unilever's patents. However, in cross-examination he conceded that this was not really related to the money value of the patents as such, more their value in general terms, relating patents to relevant products sales value rather than determining the value of the patent compared to the product. I do not consider this evidence to be of great assistance.
217. Mr Emanuel commented that if Unilever had provided evidence that there were a high number of patents which had a clear value attributable to them similar in size to that of the Shanks patents (e.g. 20 of them in the last year), then the Shanks patents would not be exceptional, although if there were only one or two a year they may be exceptional.
218. I think to an extent that this suffers from the same problem I identified looking at only licensing above Unilever generally uses patents to protect its products, so the value of a patent is only going to be a subset of the value of the product and for determining outstanding benefit it is going to be necessary to compare with the benefits obtained from those products. Had Dr Mulder's efforts to disaggregate the benefit from patents shown convincingly that other patents were more beneficial than the Shanks patents that might have pointed away from the Shanks patents providing outstanding benefit. Dr Mulder's failure to do that does not, I think, indicate anything one way or the other."
- Counsel for Prof Shanks submitted that it was significant that Unilever had been unable to establish the benefit obtained from any of their other patents and that the hearing officer had failed to take this account. I do not accept this submission. The hearing officer accepted in the passage quoted above that Unilever had failed to establish the value of any of their other patents and that this meant that Unilever could not rely upon such evidence as showing that the Shanks Patents were not of outstanding benefit. The hearing officer was right to conclude that it did not necessarily follow that the Shanks Patents were of outstanding benefit. As discussed above, he went on to consider the benefit from the Shanks Patents compared with Unilever's activities in general.
The value of patents in general
- Prof Shanks' seventh criticism concerns the value of the Shanks Patents compared to patents in general. Counsel for Prof Shanks particularly relied upon the evidence of Dr Osborn that the Shanks Patents were amongst the top 5% of patents in terms of revenue generated. The hearing officer dealt with this at  as follows:
"I do not believe these comparisons are of much assistance. The question of outstanding benefit must be considered in the context of an employer's undertaking. A patent might very well provide outstanding benefit in that context even if it did not stand out among patents generally. Conversely, I find it hard to see how a benefit of £50,000 could be considered an outstanding benefit in the context of Unilever's overall budget, even if generally patents are licensed for much less."
- Counsel for Prof Shanks argued that this was wrong, but I see no error of principle in the hearing officer's conclusion.
- Prof Shanks' final criticism concerns the importance of the Shanks Patents to the sale of Unipath. The hearing officer dealt with this as follows:
"Finally, I note there was some suggestion from Mr Green that the inclusion of the Shanks patents in the sale was particularly important because it turned projected income in the immediate future for Unipath from profit into loss. In a sense this is true, but equally it is true of any arbitrary division of Unipath's assets. To the extent that the Shanks patents made a difference, that has been accounted for in my calculations above."
- Counsel for Prof Shanks submitted that the hearing officer had overlooked significant concessions made during cross-examination by Unilever's witness Mr Welch as to the significance of the Shanks Patents to the sale of Unipath and had failed to take this into account when considering whether they were of outstanding benefit.
- So far as the first point is concerned, I do not accept this. The figures set out in the information memorandum for the sale of Unipath show that net patent income had significantly declined over the period 1998 to 2000 and was projected to decline still more sharply in 2001 and 2002. By contrast, gross profits from sales had significantly increased over the period 1998 to 2000 and were projected to carry on increasing in 2001 and 2002. Even if one assumes that all of the patent income was attributable to the Shanks Patents, it would be clear to any purchaser that this source of revenue was becoming steadily less important. Furthermore, although a "valuable patent portfolio" was identified as one of 17 "key investor considerations", the portfolio included a number of other patent families and the Shanks Patents were not singled out. Yet further, no further licence under the Shanks Patents was granted by Unipath or IMI after the sale.
- As to the second point, I do not accept this either. The hearing officer did take the money received by Unilever from the sale of Unipath which was attributable to the Shanks Patents into account in assessing whether the benefit was outstanding. There was no other benefit which he should have taken into account.
- I am not satisfied that the hearing officer made any error of principle in concluding that the Shanks Patents were not of outstanding benefit to Unilever. It follows that this appeal must be dismissed. For completeness, however, I shall deal with the points on fair share.
What would a fair share be?
- The hearing officer considered each of the matters which he was required to take into account by section 41(4) (at -, -233],  and  respectively) and various comparators identified by the parties (at -) before concluding (at  as follows:
"As a result, I would consider 5% would have been an appropriate fair share of the benefit for the claimant had I held the benefit to be outstanding."
- Prof Shanks contends that 5% is too low for no less than nine different reasons. Some of these overlap with each other or are repetitions of points that I have already considered. The main points that require consideration under this heading are as follows: (i) the hearing officer wrongly distinguished this case from the situation envisaged by Floyd J in Kelly at ; (ii) the hearing officer failed to take into account the time value of money; (iii) the hearing officer failed to take into account the costs incurred by Prof Shanks in bringing this claim; (iv) the hearing officer failed properly to appraise Unilever's licensing activities; and (v) the hearing officer failed to take into account the very high rate of return obtained by Unilever.
- For their part, Unilever contend that 5% is too high for three main reasons: (i) the hearing officer failed properly to consider the contribution made by the employer; (ii) the hearing officer failed properly to consider the relative contribution of Prof Shanks and his co-inventors in making the invention; and (iii) the award was inconsistent with that in Kelly.
The situation postulated by Floyd J in Kelly
- In Kelly Floyd J, having referred to the fact that universities typically pay their academic inventors a third of exploitation income, observed at :
"I do not think that the position of academic inventors is comparable with the position of the inventors in the present case. I suppose if an inventor in industry made an invention which created an entirely new product and income stream for his employer without any substantial input from the employer, a share in this region or even higher might be justifiable. But that would be a very different case."
- Prof Shanks contends that the present case is precisely the kind of case envisaged by Floyd J in the second sentence, and therefore a share of at least 33% is appropriate. The hearing officer dealt with this at  as follows.
"I agree with the defendants that Professor Shanks' position was very different from that of an academic, whose primary role is not to produce commercialisable inventions. I do not accept Mr Green's assertion that this is a case of an employee creating an entire new product and income stream for the employer without any substantial input from the employer as Floyd J was contemplating in Kelly it seems to me that the judge was thinking of a situation where an employee had done far more than Professor Shanks did in terms of developing a product. As I found above when considering the section 41(4) factors, the proportional contribution made by Professor Shanks appears similar to that of Dr Kelly, although in the context of far less having been done by all. At the same time, I must take account of the fact that Unilever did not put substantial resources at risk."
- Counsel for Prof Shanks submitted that the hearing officer was in error in distinguishing the present case from the situation postulated by Floyd J. I agree with the hearing officer. Prof Shanks did not create a new product for his employer. On the contrary, Unilever never produced a blood glucose test (or any other EFCD device). Nor did he produce a new income stream without any substantial input from his employer. Although Prof Shanks made the invention, the income stream was largely generated by Unilever's licensing department with little input from Prof Shanks.
Time value of money
- Prof Shanks contends that, even if the time value of money is not a benefit derived from the Shanks Patents, it is something that should be taken into account when assessing what is a fair share. The hearing officer declined to increase Prof Shanks' share on this ground for the reason he gave at :
"My view on this is that is that trying to determine how much money the defendants would have been able to reap as a result of the income they received is highly speculative given the evidence available. As Mr Alexander pointed out, there was no evidence as to what Unilever had actually done with any of the benefit (or, put another way, what they would have not done if they had not had it). Perhaps they would, absent the benefit from the Shanks patents, simply have made lower dividend payments to shareholders in which case, they did not benefit from any time value of the money at all. The speculative nature of all this was illustrated, in my view, by Mr Emanuel's neglect of it in his first expert report, and by the somewhat meagre justification he gave. It seemed to me that framed as a factual issue, there was not enough evidence to justify increasing the benefit in any way."
- I see no error of principle in this conclusion, but in my judgment there is a more fundamental reason why the employee's share should not be increased to reflect the time value of the money received by the employer. This is that, as discussed above, the time value of money is not a benefit derived from the patent. Accordingly, it is not a benefit which falls to be shared with the employee.
- Prof Shanks contends that his share of the benefit should be increased to reflect the costs incurred by Prof Shanks in bringing this claim having regard to the fact that Prof Shanks' representatives acted under a conditional fee agreement, but a scale costs award by the Comptroller would not provide full recovery of Prof Shanks' base costs, let alone any uplift. The hearing officer did not decide this point.
- In my judgment there is a short answer to this contention, which is that the costs incurred by an employee in bringing a claim for compensation under section 40(1) are not part of the benefit derived by the employer from the patents which falls to be shared with the employee. I would add two further points. The first is that Prof Shanks chose to bring his claim before the Comptroller. If he had brought his claim in this Court and succeeded, he would have obtained an award of costs in his favour. It would be extraordinary if Prof Shanks could obtain a larger share of the benefit merely because he chose to bring his claim in a forum where he could not recover substantial costs (but equally was protected against a substantial adverse costs award). The second is that I do not see how the hearing officer could have assessed the appropriate increase in Prof Shanks' share without full disclosure of (at the very least) Prof Shanks' actual costs and the conditional fee agreement, yet no such disclosure was given.
Unilever's licensing efforts
- The hearing officer's assessment of the factors specified in section 41(4)(d) at  was as follows:
"The defendants' contribution here was mainly significant in its work to obtain licenses for the Shanks patent. Unilever made a very small effort (by its standards in money terms) to commercialise the invention. The licensing efforts I have found to be serious, but not exceptional in terms of commitment made. There was no significant risk to the defendants as a result of their efforts. Certainly the defendants' efforts pale in comparison to the funding of the full research programme in Kelly, and the amount Amersham had potentially to lose had the research failed. "
- In the third sentence of this paragraph the hearing officer was referring to his earlier findings at -, and in particular his conclusion at :
"Overall, it appears that Unilever did not devote a relatively great (for itself) deal of effort and energy into licensing the Shanks patents, but it kept the patents in force and did put in a serious effort which secured the non-negligible (to put it at its lowest) returns it did. It is clear that there was significant effort and skill in the licensing negotiations, albeit not at the level a dedicated skilled licensing team would have provided."
- Prof Shanks challenges this conclusion and contends that the hearing officer ought to have concluded that Unilever's efforts to licence the Shanks Patents were poor, and in particular that Unilever could and should have concluded a licence with Company A at a much higher royalty than it ultimately did.
- The hearing officer considered the negotiations between Unilever and Company A in detail in his decision at  (Confidential Annex 2 to the public version of the decision). The main argument advanced by counsel for Prof Shanks was that the evidence showed that an agreement in principle had been reached at a meeting on 17 July 1992, but Unilever failed to send Company A a draft agreement until 26 January 1993, and as a result the terms Unilever ultimately secured were much less favourable than had been agreed in principle.
- The hearing officer dealt with this at  as follows:
"Even with hindsight, it is not clear that with greater resource and more investment in the licensing, Unilever would have secured any greater returns. It is speculation, for example, that a faster response to Company A post-July 1992 would have secured a much better licence from Unilever's perspective. But equally it might have been that locked into an expensive licence, Company A might have more aggressively pursued validity, consumed more of Unilever's resources in litigation and potentially invalidated the Shanks patents, knocking out the revenue stream entirely. The only certain fact is that the approach taken by Unilever and the work of Mr Tate in particular secured licenses from all but one of the major players worth millions of pounds to Unilever."
- Counsel for Prof Shanks submitted that the hearing officer had applied the wrong standard of proof, and that, if he had applied the correct standard of proof on the balance of probabilities, he ought to have concluded that a faster response would have secured a better licence. He also relied upon some answers given by Dr Osborn in cross-examination as supporting this.
- I do not accept these submissions. This was a factual issue for the hearing officer. Although he had the advantage of hearing the evidence of Mr Emanuel and Dr Osborn, neither of them were involved in the negotiations. Nor was any of the factual witnesses who gave evidence. Accordingly the matter fell to be decided primarily in accordance with the documentary evidence and the inherent probabilities. That is precisely what the hearing officer did. I am not persuaded that his conclusion was wrong. As counsel for Unilever pointed out, the documents show that, once Unilever had sent Company A the draft licence agreement, Company A engaged in a due diligence exercise which ultimately led to a reduced offer. This exercise included in particular detailed consideration of the validity of the Shanks Patents. There is no reason to think that anything different would have occurred if Unilever had sent the draft more promptly.
- Unilever challenge the hearing officer's conclusion at  on a different basis. This is that the hearing officer wrongly failed to take into account the critical role of Unilever's size and financial clout in extracting licence fees, particularly in circumstances where there was unchallenged evidence that the validity of the Shanks Patents was open to question. Counsel for Unilever submitted that this explained why most of the licensees had approached Unilever and why they were prepared to take licences at modest royalty rates in return for freedom to operate under the Shanks Patents, as illustrated in particular by the negotiations with Company A.
- I accept this submission. So far as can be seen from his decision, the hearing officer limited his consideration to the skill, effort and money expended by Unilever in licensing the Shanks Patents and the risk and rate of return that this represented. I agree with counsel for Unilever that it is clear that an important factor in Unilever's ability to extract licence fees was that fact that it could afford to bring proceedings for infringement and to pursue them to a conclusion. In the event, Unilever did not have to do so; but it is obvious that potential licensees will have borne this in mind. As Prof Shanks' expert Mr Emanuel put it, Unilever had "formidable deal closing power". Furthermore, the amounts paid by the licensees were comparable to the costs of litigating the patents in a small number of jurisdictions. This is not a factor which the hearing officer appears to have taken into account in assessing what would be a fair share. I shall consider the significance of this factor below.
Rate of return
- As for Prof Shanks' contention that the hearing officer failed to take into account the very high rate of return obtained by Unilever, I do not accept this. I consider that the last sentence of  shows that the hearing officer did take this into account.
The contribution of the other inventors
- As noted above, Prof Shanks was one of three named co-inventors of the Shanks Patents, although he was the only named inventor in respect of the Priority Documents. Unilever contend that Prof Shanks did not prove that he was more responsible for the invention than his two co-inventors and was not entitled to credit for more than a third of it. Accordingly, Unilever contend that Prof Shanks is only entitled to one-third of whatever would be a fair share for all three inventors.
- There are two aspects to this contention. The first concerns the hearing officer's factual findings as to the relative contributions of Prof Shanks, Dr Nylander and Dr Smith. The hearing officer dealt with this topic at -, concluding at  as follows:
"I note that the independent claims in EP0170375 as granted are based on subject matter also found in the priority application and I therefore conclude that the invention defined in at least the independent claims was invented by Professor Shanks. Bearing in mind all the evidence I have heard concerning how the invention was devised, the nature of discussions between Professor Shanks and Unilever's patent department, the demonstrations he said he did of the ECFD device, and the evidence on the contribution of the other inventors, I am satisfied that Professor Shanks' account of who invented what is accurate. The other inventors did contribute to the patent, but I am satisfied that Professor Shanks invented the invention claimed in the independent claims, had contemplated the use of electrodes apart from tin oxide and ion-selective membranes, and also had in mind the application to glucose testing. Professor Shanks' evidence was overall convincing, the defendants had no witnesses who could contradict it, and the contemporaneous documentation in evidence was consistent with Professor Shanks' evidence."
- Counsel for Unilever attacked this conclusion on a number of grounds, which may be summarised as follows. First, that the hearing officer had attached far too much importance to the impression Prof Shanks' demeanour made on him during the course of cross-examination (at ). Secondly, that the hearing officer failed to give proper effect to his own findings (at ) that Prof Shanks' recollection was "clearly imperfect" and (at ) that there were inconsistencies in Prof Shank's evidence. Thirdly, that the hearing officer had failed to take proper account of the fact that Prof Shanks had not given an account of building an ECFD prototype in any of his witness statements and only did so for the first time in cross-examination (see -). Fourthly, that the hearing officer ought to have concluded that the only reliable evidence of Prof Shanks' contribution was the Priority Documents.
- Powerfully argued though these points were, I am unable to accept them. The hearing officer had the advantage of seeing Prof Shanks give evidence. I am not satisfied that he failed to make proper use of that advantage. The hearing officer also considered the documentary evidence and such other evidence as there was. As he pointed out, Prof Shanks' account was not contradicted by any other witness. I am not persuaded that the hearing officer's conclusion was wrong.
- Turning to the second aspect of the matter, it is common ground that the starting point in assessing fair share under section 41(1) must be the presumption that each co-inventor is entitled to an equal proportion of whatever constitutes a fair share of the benefit for the employees. It is also common ground that it is clear from section 41(4)(b) and (c) that this presumption can be displaced by evidence that one inventor contributed more to the invention than the other(s). Thus in Kelly Floyd J awarded Dr Kelly 2% and Dr Chiu 1% having regard to their relative contributions to the invention.
- In the present case, it is clear from the hearing officer's findings that Prof Shanks was the lead inventor. The hearing officer did not conclude that Dr Nylander and Dr Smith had made no contribution to the Patents, however. On the contrary, he found (at ) that Dr Smith had contributed the feature of one claim and that Dr Nylander had contributed to the specific embodiments. As counsel for Unilever submitted, even a contribution solely to the specific embodiments may be significant with regard to the sufficiency of a patent.
- When it came to considering the factors specified in section 41(1)(c), the hearing officer's assessment at  was as follows:
"I have found above that Professor Shanks contributed the key aspects of the patented invention. His co-inventors clearly had a role in fleshing out the invention sufficiently for the ultimate patent application, but this was a lesser role.
- In reaching his conclusion as to what would be a fair share for Prof Shanks, the hearing officer did not start by assessing what would be a fair share for the employees as a whole and then determining what would be a fair proportion of that fair share for Prof Shanks. Nor did he explicitly take the contribution of the other inventors into account in any other way in arriving at the figure of 5%. Counsel for Unilever submitted that this was an error of principle because Prof Shanks had "scooped the pool".
- After some hesitation, I have concluded that I do not accept this submission. A similar criticism could be made of Floyd J's decision in Kelly, since he did not explicitly take the contribution of Dr Latham into account in arriving at the figure of 3% for Dr Kelly and Dr Chiu. Considered as a whole, however, it is clear from his judgment that he did take Dr Latham's contribution into account. I think the same is true of the hearing officer's decision with regard to Dr Nylander and Dr Smith.
Inconsistency with Kelly
- In Kelly Dr Kelly was awarded 2% and Dr Chiu was awarded 1%, making a total of 3%, of the benefit which Floyd J found Amersham had derived from the patents. In the present case the hearing officer awarded Prof Shanks 5%. It can be seen from the hearing officer's reasoning at  quoted above that he found that "the proportional contribution made by Professor Shanks appears similar to that of Dr Kelly", but he adjusted this to "take account of the fact that Unilever did not put substantial resources at risk".
- Unilever challenge this conclusion as being inconsistent with Kelly. Counsel for Unilever submitted that it was important for the law to operate consistently and predictably, and that there could be no justification for an award which was 2.5 times that of Dr Kelly's in percentage terms given (a) the significant efforts which Floyd J had found had been devoted by Dr Kelly to implementing the invention compared to the lack of involvement of Prof Shanks in the licensing the Shanks Patents and (b) the transformative effect of Dr Kelly's patents on Amersham's business compared to the absence of any such effect on Unilever's business. Against this, counsel for Prof Shanks submitted that consistency with Kelly would justify an even higher award because of the much higher rate of return enjoyed by Unilever than by Amersham.
- In my judgment this is where the hearing officer's failure to take Unilever's ability to extract licence fees due to its size and financial resources into account becomes important. He awarded Prof Shanks a larger percentage than Dr Kelly because Unilever did not put substantial resources at risk, whereas Amersham did. That is true, but it overlooks the fact that the benefit which Unilever derived from the Shanks Patents was obtained purely from licences which Unilever was able to conclude at least in part because of its size and financial resources. In those circumstances I do not think it would have been right to award Prof Shanks a greater percentage than Dr Kelly and Dr Chiu together, that is to say, 3%.
- For the reasons given above, I conclude that Prof Shanks' appeal against the hearing officer's conclusion that the Shanks Patents were not of outstanding benefit to Unilever, and therefore Prof Shanks is not entitled to an award of employee compensation under section 40(1), must be dismissed.
- It is clearly undesirable that a claim of this nature should take seven years to reach a first instance determination. The reasons for this were not explored before me, although it is clear that the interim decision and appeals were one factor, and I am not in a position to attribute blame. In the future, however, the Intellectual Property Office should attempt to ensure that such claims are determined within a reasonable time of commencement.
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