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Wednesday, 11 February 2009

Inventors hit the jackpot in employee compensation claim

Only thirty one years after compensation for employee inventors was introduced into UK patent law, and another four years after the compensation provisions were amended in order to give inventors a chance of getting anything, the Patents Court for England and Wales has just made its first compensation order. The case in question is Kelly and Chiu v GE Healthcare Ltd [2009] EWHC 181 (Pat), a ruling of Mr Justice Floyd.

Right: till Floyd J gave his judgment, Amersham for most people was just a sleepy town in Buckinghamshire

Having established that the invention they made was worth £50 million to Amersham International (subsequently taken over by GE), the judge held that Kelly was entitled to £1 million, and Chiu to £500,000, for the value of the inventive contributions they made to their employer's profitability, in addition to their regular pay, of course.

The Patents Act 1977, sections 39 to 42 (as amended) provide a self-contained employee invention compensation code which, till recently proved more or less impossible for inventors to operate to their advantage, largely on account of the difficulty of showing that the patent resulting from their efforts conferred an outstanding benefit upon their employer. Now it is easier, in that it is only the invention, not the patent, that must confer the benefit.

This decision wasn't yet available on BAILII when the IPKat last looked, but you can read it in all its glory (45 pages, 248 paragraphs) here, thanks to Will James of Marks & Clerk. The Kat reserves the right to make further comments once he's has a chance to read the reasoning ...


Anonymous said...

I think it was the unamended form of s.41 that applied (i.e. patent not invention).

Jeremy said...

Quite right -- and my post rather gives the impression that it was the amended form of the Act that was applied here. I just keep getting very excited about the fact that claims are easier to bring now than they used to be ... Sorry!

Anonymous said...

Interesting. This could be the reason why I have received inquieries regarding national law on employee compensation recently.

Anonymous said...

Does anyone know if GE appealed this decision?

Anonymous said...

GE did not seek permission to appeal

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