Innovation and the Patents Act
Now retired and living with his wife in Scotland, Prof. Ian Shanks is a renowned scientist and inventor. One of the youngest members to enter the Royal Society at the time, he was instrumental in developing the liquid crystal display technology we use in many of our electronic devices today. An avid tinkerer even at home, he was able to prototype one of his most impactful (and controversial) inventions using his daughter's toy microscope set.
That prototype was developed into what we know to call an electrochemical capillary fill device (ECFD). By using concepts learned from his background in liquid crystal display technology, this device is used to measure glucose levels in the blood and is now incorporated in many of the glucometers we use today, helping countless diabetics monitor their condition better.
His employer at the time of invention, Unilever, was able to benefit in around £24.5 million over time from patenting his prototype, while Prof. Shanks didn't receive anything.
With the introduction of the Patents Act in 1977, inventors are now entitled to a 'fair share' of their employer's profits from the invention, in addition to the salary and benefits they already receive.
While this should benefit employee inventors like Prof. Shanks and provide them with the incentive to innovate, the reality is that large companies have been particularly skillful in circumventing this. With large and experienced legal teams, companies have been able to prevent their employee inventors from receiving the benefits due to them from this act. It was only in 2009 that the very first inventors were able to benefit from this act, namely Kelly & Chiu, who were former employees of GE Healthcare Ltd.
Thirteen long years
Prof. Shanks initially applied for his 'fair share' of compensation for his invention in 2006, however, the first hearing would only take place six years later. It was subsequently found by the Comptroller-General of the UK Intellectual Property Office that the benefit provided to Unilever was not outstanding, and therefore did not merit the amount of compensation Prof. Shanks was seeking.
In an appeal in July 2014, the UK High Court dismissed Prof. Shanks' arguments regarding his fair share, arguing that no more than 3% of the company's £24.5 million in benefits should be compensated to Prof. Shanks.
Almost forty years after his invention, Prof. Shanks finally wins the legal battle against his former employer after the case reached the Supreme Court. He is set to receive compensation of ₤2 million (around $2.57 million) for his efforts, almost three times the original amount set by the UK High Court's previous ruling.
His win is a win for employees everywhere, setting a precedent that allows inventors and scientists to finally reap the benefits of their own fair share of compensation. In an interview with BBC, Prof. Shanks shares about the experience.
"I would much prefer that employee inventors believe that if they do something that turns out to be really profitable and significant, they may actually stand a chance of getting an award."