Professor 'Employed to Invent' Denied Share of £24.5 Million Profits

Those who are 'employed to invent' normally have few rights to the fruits of their labour, as a professor who invented a novel blood glucose testing device discovered recently. Although his invention earned his employers £24.5 million, he failed in a High Court bid for a share of the spoils.

Whilst employed by a subsidiary of international giant Unilever, the professor had come up with the idea for a device that could be used by diabetics. He had in part developed his invention at home, using bulldog clips and slides from his daughter's toy microscope kit. His idea was patented by Unilever and proved to be a roaring success.

Despite his employee status, the professor sought a share of the profits made from his invention, under Section 40(1) of the Patents Act 1977. However, his claim was dismissed by a hearing officer acting on behalf of the Comptroller-General of Patents on the basis that the benefit to Unilever from his invention was 'not outstanding'.

Amongst other conclusions reached by the hearing officer was that, although £24.5 million would by most companies be viewed as a substantial sum, it was not exceptional when viewed in the context of the overall size of Unilever's business.

On appeal from that decision, the professor contended that Unilever was not 'too big to pay' and pointed to the 'extreme disparity' in benefit that the company had derived from his invention when compared to his modest salary and benefits. Unilever, he submitted, had enjoyed a high rate of return having taken no commercial risk.

The High Court acknowledged that the case was finely balanced. However, in dismissing the professor's appeal, it noted that, although he may have gone beyond his brief in developing his idea, he had been 'employed to invent' under a contract which widely defined his duties. There was no error of principle in the hearing officer's conclusion that his invention had not been of outstanding benefit to Unilever.

It may seem surprising that, in such circumstances, a company would reap the whole of the benefit of such a valuable patent which was granted as a result of an employee's insight. In general, the new intellectual property created by an employee paid to invent belongs to the employer, although the respective rights can be varied by agreement.

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