Section 40

Compensation of employees for certain inventions

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40.-(1) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period [Rule 91: from grant to 1 year after expiry] that -

  • (a) the employee has made an invention belonging to the employer for which a patent has been granted,
  • (b) having regard among other things to the size and nature of the employer's undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer, and
  • (c) 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.

(2) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period [Rule 91] that -

  • (a) a patent has been granted for an invention made by and belonging to the employee;
  • (b) his rights in the invention, or in any patent or application for a patent for the invention, have since the appointed day been assigned to the employer or an exclusive licence under the patent or application has since the appointed day been granted to the employer;
  • (c) the benefit derived by the employee from the contract of assignment, assignation or grant or any ancillary contract ("the relevant contract") is inadequate in relation to the benefit derived by the employer from the invention or the patent for it (or both); and
  • (d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract;

the court or the comptroller may award him such compensation of an amount determined under section 41 below.

(3) Subsections (1) and (2) above shall not apply to the invention of an employee where a relevant collective agreement provides for the payment of compensation in respect of inventions of the same description as that invention to employees of the same description as that employee.

(4) Subsection (2) above shall have effect notwithstanding anything in the relevant contract or any agreement applicable to the invention (other than any such collective agreement).

(5) If it appears to the comptroller on an application under this section that the application involves matters which would more properly be determined by the court, he may decline to deal with it.

(6) In this section -
*"the prescribed period", in relation to proceedings before the court, means the period prescribed by rules of court, and "relevant collective agreement" means a collective agreement within the meaning of the Trade Union and Labour Relations (Consolidation) Act 1992, made by or on behalf of a trade union to which the employee belongs, and by the employer or an employers' association to which the employer belongs which is in force at the time of the making of the invention.

(7) References in this section to an invention belonging to an employer or employee are references to it belonging as between the employer and the employee.

Notes:
Manual of Patent Practice

The current form of s40 (and ss 41 & 43) only applies to patents applied for and granted after 1 January 2005. For patents applied for before this date, the previous test of outstanding benefit as related to the patent applies (see, for example, Memco-Med's Patent [1992] RPC 403).

In Kelly & Chiu v GE Healthcare Limited [2009] EWHC 181 (Pat), Floyd J ruled that compensation was due to employee inventors on two EP patents (applied for prior to 1 June 2005). In considering the questions to be answered in relation to sections 40 and 41, the judge stated:

  1. Section 40 is available to an inventor in the sense of the "actual deviser" of the invention [after Yeda v Rhone Poulenc: see under section 37], but not to those who merely contributed to the invention without being joint inventors;
  2. Section 40 is available to an employee who makes an invention (which is subsequently patented by the employer) in the ordinary course of his employment or in the course of duties specifically assigned to him;
  3. Under the section prior to its amendment, it is the patent (as opposed to the invention) which must be of outstanding benefit to the employer, having regard to the size and nature of the employer's undertaking;
  4. "Outstanding" means "something special" or "out of the ordinary" and more than "substantial", "significant" or "good". The benefit must be something more than one would normally expect to arise from the duties for which the employee is paid;
  5. On the other hand it is not necessary to show that the benefit from the patent could not have been exceeded;
  6. Section 40 is not concerned with whether the invention is outstanding, although the nature of the employee's contribution may fall to be considered at the section 41 stage, if it is reached;
  7. It will normally be useful to consider what would have been the position of the company if the patent had not been granted, and compare this with the company's position with the benefit of the patent;
  8. The patent must have been a cause of the benefit, although it does not have to be the only cause. The existence of multiple causes for a benefit does not exclude the benefit from consideration, although the benefit may have to be apportioned to isolate the benefit derived from the patent;
  9. "Patent" in section 40 does not include regulatory data exclusivity. Thus the scenario without patent protection is one where RDE nevertheless exists;
  10. It must be "just" to make an award: the consideration of what is just is not limited to the facts set out in section 40;
  11. It is not a requirement of obtaining compensation that the employee can prove a loss (for example by reference to inadequate remuneration for his employment) or by the expenditure of effort and skill beyond the call of duty. These are nevertheless factors to take into account under section 41;
  12. The valuation of any benefit is to be performed ex-post and in the light of all the available evidence as to benefit derived from the patent: not "ex-ante";
  13. Where the employee shows that the invention has been of outstanding benefit, the amount of compensation is to be determined in the light of all the available evidence in accordance with section 41 so as to secure a just and fair reward to the employee, neither limiting him to compensation for loss or damage, nor placing him in as strong a position as an external patentee or licensor."

The judge arrived at a figure of £50 million for "the absolute rock bottom figure for the benefit from the patents" (para 172), calculated by taking around 10% of the total sales of the patented product (Myoview) over the lifetime of the patents as being a conserative estimate of the value provided by the patents. The two claimant inventors were awarded 2% and 1% of this figure, i.e. £1M and £0.5M.

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