Patents Act 1977

Changes over time for: Section 41

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Patents Act 1977, Section 41 is up to date with all changes known to be in force on or before 18 May 2024. There are changes that may be brought into force at a future date. Changes that have been made appear in the content and are referenced with annotations.

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s. 56(4)(a)(iiia) and word added by S.I. 2006/1056 Sch. para. 2(b) (This amendment comes into force on the day on which 2005 asp 13, s. 20 comes into force, see art. 1(2)(b))
s. 63(3)(a) words in s. 63(3) renumbered as s. 63(3)(a) by 2004 c. 16 s. 2(4) (Amendment not applied to legislation.gov.uk. S. 2(4) was repealed (29.4.2006) by S.I. 2006/1028, art. 2(4), Sch. 4)
s. 63(3)(b) and word inserted by 2004 c. 16 s. 2(4) (Amendment not applied to legislation.gov.uk. S. 2(4) was repealed (29.4.2006) by S.I. 2006/1028, art. 2(4), Sch. 4)

41 Amount of compensation.U.K.

[F1(1)An award of compensation to an employee under section 40(1) or (2) above shall be such as will secure for the employee a fair share (having regard to all the circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, from any of the following—

(a)the invention in question;

(b)the patent for the invention;

(c)the assignment, assignation or grant of—

(i)the property or any right in the invention, or

(ii)the property in, or any right in or under, an application for the patent,

to a person connected with the employer.]

(2)For the purposes of subsection (1) above the amount of any benefit derived or expected to be derived by an employer from the assignment, assignation or grant of—

(a)the property in, or any right in or under, a patent for the invention or an application for such a patent; or

(b)the property or any right in the invention;

to a person connected with him shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that person had not been connected with him.

(3)Where the Crown[F2, United Kingdom Research and Innovation] or a Research Council in its capacity as employer assigns or grants the property in, or any right in or under, an invention, patent or application for a patent to a body having among its functions that of developing or exploiting inventions resulting from public research and does so for no consideration or only a nominal consideration, any benefit derived from the invention, patent or application by that body shall be treated for the purposes of the foregoing provisions of this section as so derived by the Crown[F3, United Kingdom Research and Innovation or the Research Council (as the case may be)].

In this subsection “Research Council” means a body which is a Research Council for the purposes of the M1Science and Technology Act 1965 F4...

(4)In determining the fair share of the benefit to be secured for an employee in respect of F5... an invention which has always belonged to an employer, the court or the comptroller shall, among other things, take the following matters into account, that is to say—

(a)the nature of the employee’s duties, his remuneration and the other advantages he derives or has derived from his employment or has derived in relation to the invention under this Act;

(b)the effort and skill which the employee has devoted to making the invention;

(c)the effort and skill which any other person has devoted to making the invention jointly with the employee concerned, and the advice and other assistance contributed by any other employee who is not a joint inventor of the invention; and

(d)the contribution made by the employer to the making, developing and working of the invention by the provision of advice, facilities and other assistance, by the provision of opportunities and by his managerial and commercial skill and activities.

(5)In determining the fair share of the benefit to be secured for an employee in respect of F6... an invention which originally belonged to him, the court or the comptroller shall, among other things, take the following matters into account, that is to say—

(a)any conditions in a licence or licences granted under this Act or otherwise in respect of the invention or the patent [F7for it];

(b)the extent to which the invention was made jointly by the employee with any other person; and

(c)the contribution made by the employer to the making, developing and working of the invention as mentioned in subsection (4)(d) above.

(6)Any order for the payment of compensation under section 40 above may be an order for the payment of a lump sum or for periodical payment, or both.

(7)Without prejudice to [F8section 12 or section 14 of the M2Interpretation Act 1978], the refusal of the court or the comptroller to make any such order on an application made by an employee under section 40 above shall not prevent a further application being made under that section by him or any successor in title of his.

(8)Where the court or the comptroller has made any such order, the court or he may on the application of either the employer or the employee vary or discharge it or suspend any provision of the order and revive any provision so suspended, and section 40(5) above shall apply to the application as it applies to an application under that section.

(9)In England and Wales any sums awarded by the comptroller under section 40 above shall, if [F9the county court] so orders, be recoverable [F10 under section 85 of the County Courts Act 1984] or otherwise as if they were payable under an order of that court.

(10)In Scotland an order made under section 40 above by the comptroller for the payment of any sums may be enforced in like manner as [F11an extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland.].

(11)In Northern Ireland an order made under section 40 above by the comptroller for the payment of any sums may be enforced as if it were a money judgment.

Textual Amendments

F1S. 41(1) substituted (1.1.2005) by Patents Act 2004 (c. 16), ss. 10(3), 17(1) (with s. 10(8)); S.I. 2004/3205, art. 2(d) (with art. 9)

F2Words in s. 41(3) inserted (1.4.2018) by Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(a); S.I. 2018/241, reg. 2(t)

F3Words in s. 41(3) substituted (1.4.2018) by Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(b); S.I. 2018/241, reg. 2(t)

F4Words in s. 41(3) omitted (1.4.2018) by virtue of Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(c); S.I. 2018/241, reg. 2(t)

F5Words in s. 41(4) repealed (1.1.2005) by Patents Act 2004 (c. 16), ss. 10(4), 17(1), Sch. 3 (with s. 10(8)); S.I. 2004/3205, art. 2(d)(g) (with art. 9)

F6Words in s. 41(5) repealed (1.1.2005) by Patents Act 2004 (c. 16), ss. 10(4), 17(1), Sch. 3 (with s. 10(8)); S.I. 2004/3205, art. 2(d)(g) (with art. 9)

F7Words in s. 41(5)(a) inserted (1.1.2005) by Patents Act 2004 (c. 16), ss. 10(5), 17(1) (with s. 10(8)); S.I. 2004/3205, art. 2(d) (with art. 9)

F8Words substituted by virtue of Interpretation Act 1978 (c. 30), s. 25(2)

F9Words in s. 41(9) substituted (E.W.S.) (22.4.2014) by Crime and Courts Act 2013 (c. 22), s. 61(3), Sch. 9 para. 52; S.I. 2014/954, art. 2(c) (with art. 3) (with transitional provisions and savings in S.I. 2014/956, arts. 3-11)

F10Words in s. 41(9) substituted (6.4.2014) by Tribunals, Courts and Enforcement Act 2007 (c. 15), s. 148, Sch. 13 para. 40 (with s. 89); S.I. 2014/768, art. 2(1)(b)

F11Words in s. 41(10) substituted (1.1.2005) by Patents Act 2004 (c. 16), s. 17(1), Sch. 2 para. 11; S.I. 2004/3205, art. 2(k) (with art. 9)