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ISSUE 1 2014
MASCHIO & SOAMES IP LTD
The bird of paradise does not alight on the hand that grasps - Chinese proverb
Employee Compensation
Kate Lees
A number of patent systems cater for employee compensation in respect of innovations made by an organisation’s employees. These are not harmonised and can vary quite markedly even for countries being party to the European Patent Convention.
In the UK, the patent directed to an invention made by an employee but owned by the employer has to be of outstanding benefit to the employer. Outstanding benefit is judged in relation to the employer’s business as a whole. Two decisions illustrate the approach to be adopted.
In Kelly & Chiu v GE Healthcare the employees were successful. They established that the patent was of outstanding benefit to the employer. Patents were crucial to the success of the company (Amersham) and lead to its acquisition by GE. The patent in question, related to a radiopharmaceutical imaging agent considered to be a “blockbuster” in the field and transformed the fortunes of the company. The inventors were awarded 3% of the 50 million profit between them.
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