Letters: February 2020

Having recently moved from a catalysis lab into patent law, I was happy to see an article on Shanks v Unilever (Chemistry World, January 2020, p14).

As alluded to, the crux of the case was whether the benefit of the Shanks patents was in fact ‘outstanding’. The suggestion in the article that the licensing of the patents by Unilever rendered the benefit outstanding, however, is an unsound oversimplification.

The crucial issue was the reference against which to compare the benefit (approximately £24m) from the Shanks patents. This is detailed in section 40 of the Patents Act, which assesses whether a benefit is outstanding ‘having regard to the size and nature of the employer’s undertaking’.

Who then, was Shanks’ employer? Not, as stated in the article, Unilever, but a research subsidiary thereof (CRL). This was highly significant. The UK Intellectual Property Office and the earlier appeals had taken the size of the employer’s undertaking to be Unilever in its entirety, in which context £24m was unexceptional. The Supreme Court decided differently, stating that the relevant undertaking was that of CRL alone. Therefore, the benefit of the Shanks patents was to be measured against the income from other CRL patents.

In this context the Shanks patents clearly stood out. That the reward to Unilever was gained essentially risk-free from licensing is a subsidiary point.

Also, as you stated, no successful compensation claims had been made until relatively recently. This is partially due to the wording of section 40 before 2004, which required that the patent – not the invention – be of ‘outstanding benefit’. This can often be trickier to demonstrate.