Employee invention

An employee invention (service invention ) is a patentable or utility model invention that an employee has made as part of his service obligation. According to the law on employee inventions, the employer is generally entitled to the rights to the service invention, whereas the employee only has a compensatory claim to remuneration. Special provisions also apply after the abolition of the so-called university professor's privilege for inventions by those employed at a university. The law also regulates the treatment of such creative work by employees that cannot be protected by a patent or utility model or otherwise eligible for protection, but improve the performance of a company ("technical improvement suggestions").

The legal regulation of employee inventions is necessary because two interests collide here, namely labor law , according to which the result of the work of the employee belongs to the employer, and the right of intellectual property , which according to the so-called "inventor principle", the rights to an invention settled with the inventor.

Internationally, in most industrialized countries there are comparable laws regulating the rights and obligations of employees and employers, with partly similar (Denmark, Finland, Norway and Sweden), but partly completely different results.

General in Germany

The Employee Invention Act creates a balance of interests between the employer and the employee who has made an invention within the meaning of the Patent Act in the course of his work .

Employees within the meaning of the Employee Invention Act are employees in the private and public service, as well as civil servants and soldiers ( Section 1 ArbnErfG)

According to § 6 PatG the inventor has a right to the patent . In the case of inventions by employees, there is a conflict between this original inventor right of the employee on the one hand and the employer's right to the work result on the other. A balance of interests is created by the fact that the employer has a fundamental right to the service invention, but the employee acquires a claim for compensation in return.

However, this only applies to so-called service inventions. These are inventions that were made during the duration of the employment relationship and that arose from the work incumbent on the employee in the company or that are largely based on the company's experience or work. This takes account of the employer's share in the invention. The other inventions are so-called free inventions.

If the employer wants to avoid disclosure of the invention, for example because he does not want to divulge company secrets, he can also treat a service invention as a company secret. The employer then waives a patent or utility model application , but the inventor also acquires a claim for remuneration.

Public universities often leave the patent application and commercial exploitation of employee inventions to regional patent exploitation agencies , as they usually do not have the specialized resources themselves. In many cases, the patent exploitation agencies are subsidized by the federal states, sometimes with full funding of 100 percent, as they do not achieve cost coverage. Because of this kind of funding, there is often little incentive to consistently exploit the patents that have been acquired, which means that the inventors receive little remuneration. However, these problems in patent exploitation have not yet been systematically evaluated in Germany.

history

In 1936, the German patent law established the primary property right assignment of an invention to the inventor for the first time. The transfer of rights from the employed inventor to the employer was not regulated.

In 1942, the so-called Göring-Speer-Ordinance came into force, with which inventions by employees, especially for armaments, were to be "actively promoted, evaluated and protected".

In 1957, the German law on employee inventions (ArbnErfG) came into force on the basis of the Göring-Speer regulation .

On October 1, 2009, the Patent Modernization Act came into force, which particularly affects the Employee Invention Act.

Procedure

Invention disclosure

The employee must report the service invention to the employer immediately, separately and in text form . In the inventor report, the employee must describe the technical problem, its solution and how the service invention came about. The invention report must be identified as such. The violation of the reporting obligation can give rise to a claim for damages by the employer against the employee and have consequences under labor law up to and including the dismissal of the employee. According to the law applicable before October 1, 2009, the written form was required for disclosure of the invention, i.e. handwritten signature. Since October 1, 2009, only text form is required. The invention disclosure can therefore now be sent to the employer without a signature, for example by fax or e-mail . If there are several inventors, a joint invention disclosure is recommended.

The employer must immediately confirm receipt of the invention disclosure in writing. He can object to the invention disclosure within two months if it is incomplete. The declaration of complaint is not subject to any formal requirements and can therefore also be made orally. At the end of two months, the disclosure of the invention is deemed to be in order.

If the employer does not release the reported invention within four months of receipt of the proper invention disclosure, the service invention is deemed to have been used. The release declaration must be in text form and can therefore also be sent by fax or e-mail. If no release declaration is made within four months, all rights to the service invention are transferred from the employee to the employer. This is in contrast to the regulation that was valid before October 1, 2009, according to which the invention became free if no claim was made by the employer within four months. The regulation now in force ensures that the employer does not lose his rights to an invention because he fails to make a timely claim, as was often the case in the past, especially in small and medium-sized companies. The option of limited use no longer exists since October 1, 2009.

The employer must either register a registered service invention (in principle regardless of whether he makes use of it or not) as a patent in Germany or release it immediately. This obligation to register also exists if, in the opinion of the employer, contrary to the opinion of the employee, the invention cannot be protected. The obligation to register does not apply if the invention has been approved by the employer, the employee's clear will to refrain from filing an industrial property right, or the conditions for a company-secret invention are met. As an exception, the employer can also register an invention as a utility model if this seems more appropriate. The employer also has the right to register the invention abroad. Before the end of the priority year, the employer must inform the employee whether and in which country he is registering the invention, and authorize the inventor to register for those countries in which he does not want to register. The employer must always inform the inventor about the progress of the application and can only abandon the invention with the consent of the inventor. As a rule, however, the employer must then give the employee the opportunity to do the registration himself.

The employee must inform the employer of free inventions immediately and in writing. Since October 1, 2009, the employee can use fax or e-mail to transmit the notification. The obligation to notify does not apply if the invention obviously cannot be used in the employer's area of work. In case of doubt, the employee should always report the invention in order to exclude claims for damages by the employer and consequences under labor law. The notification must contain detailed information about the invention and how it came about so that the employer can reliably assess its classification as a free invention or service invention. The notification must also show that the employee regards the invention as a free employee invention. The employer can deny within a period of three months that the invention is a free invention. If the free invention falls within the scope of the company's work, the employee must offer the employer non-exclusive use on reasonable terms before using the invention for other purposes during the duration of the employment relationship.

Unlimited use

Up to September 30, 2009, the employer could claim the rights to the invention within 4 months from the date of receipt of the invention disclosure. This was done through the so-called claim ( § 6 , § 7 ArbnErfG), which is a unilateral declaration of intent by the employer that requires delivery and must be made in writing. The timely declaration of the claim was important in order to safeguard the employer's rights, as otherwise the employee could later lose the corresponding patent or utility model (which was applied for without a claim).

The law for the simplification and modernization of patent law, which came into force on October 1, 2009, is deemed to have been claimed if the employer does not release the invention within four months of receiving the invention report.

In order to compensate for the fact that the employee loses the rights to his invention by making a claim against the employer, the employee's claim for remuneration against the employer arises with the claim ( § 9 ArbnErfG). After the invention has been reported, the employer is obliged to register a property right ( patent or utility model ) immediately .

Limited usage

Before October 1, 2009, the employer could only make limited use of the invention, which meant that he only acquired a non-exclusive right to use the invention. For this, however, the employee also had a claim to remuneration from the employer, but only if the employer uses the invention, since the employer does not enjoy any other advantages (e.g. through blocking effect or reserve effect). In practice, however, the limited use was rarely encountered due to the problem of remuneration.

Due to the law for the simplification and modernization of patent law, which came into force on October 1, 2009, the limited use no longer applies.

Entitlement to remuneration

The entitlement to remuneration is based on the ArbNEG guidelines issued by the Federal Minister of Labor , text below under web links.

Situation in Austria

The rights and obligations of employees and employers in connection with inventions are regulated in Sections 6 - 19 of the Austrian Patent Act (PatG).

Section 7 of the Patent Act defines the conditions for a service invention to exist. There must be a written agreement between the employee and the employer or a collective agreement on this, the invention must fall within the field of work of the company in which the employee is active, and at least one of the three other requirements must also be met: a) the activity, which led to the invention must be part of the employee's official duties, or b) the employee must have received the inspiration for the invention through his work in the company, or c) the invention must come about through the use of experience or the The company's tools have been made much easier.

If there is a service invention, the employee must immediately report it to the employer, who according to § 12 PatG has the right to claim it within 4 months with a unilateral declaration (some collective agreements make the period of 4 months to 3 months shortened). If the employer fails to meet the deadline, the invention becomes free and the employee can dispose of it at will.

In return for the transfer of an invention, the employee has the right to appropriate remuneration, unless he is expressly employed as an inventor and remunerated accordingly ( Section 8 PatG).

The amount of the remuneration is determined according to § 9 PatG according to the benefit that the company derives from the invention. This benefit can be determined using the license analogy method preferred by the Supreme Court (OGH), by determining the internal benefit or by estimating.

The share of the company's experience, resources and preparatory work reduces the amount of the remuneration.

A special protection of the employee is achieved by § 17 PatG, according to which the rights of the employee can neither be canceled nor restricted by agreement.

Section 19 of the Patent Act stipulates that the claims of employees and employers expire within 3 years. § 20 PatG defines the inventor's claim to be publicly named as such.

literature

Kurt Bartenbach, Franz-Eugen Volz: Employee inventions. Practical guide with sample texts. 6th edition. Heymanns, Cologne 2016, ISBN 978-3-452-27916-3 .

Kurt Bartenbach, Franz-Eugen Volz: Employee Invention Act. Comment on the law on employee inventions . 6th edition. Carl Heymanns, Cologne 2019, ISBN 978-3-452-29121-9 .

Reimer, Schade, Schippel, Kaube: ArbEG (law on employee inventions and their remuneration guidelines). Comment. 8th edition. Schmidt, Berlin 2007, ISBN 978-3-503-10301-0 .

Brent Schwab: Employee Invention Law. Employee Invention Act, employee copyright law, company suggestion scheme. Hand comment. Nomos, Baden-Baden 3rd edition 2014, ISBN 978-3-8487-1218-2 .

Burkhard Boemke , Stefan Kursawe (ed.): Law on employee inventions. Comment . 1st edition. CH Beck, Munich 2015, ISBN 978-3-406-63881-7 .

Karl Theodor Kraemer: The remuneration of (employee) inventions using the example of pharmaceuticals, historically, de lege lata and de lege ferenda. Pro BUSINESS 2011, ISBN 978-3-86805-933-5

Web links

Individual evidence

↑ Dietmar Harhoff, Karin Hoisl: Institutionalized Incentives for Ingenuity - Patent Value and the German Employees' Inventions Act . November 28, 2006 ( uni-muenchen.de [accessed December 20, 2010]).

↑ Michael Trimborn, Bernd Fabry: The right of the employee inventor in the international overview . In: Communications from German patent attorneys . tape 100 , no. 12 . Heymanns, December 2009, p. 529-576 .

↑ Using the example of Thuringia: Archived copy ( memento of the original from March 4, 2016 in the Internet Archive ) Info: The archive link was inserted automatically and has not yet been checked. Please check the original and archive link according to the instructions and then remove this notice. @1@ 2
↑ Ordinance on the Treatment of Inventions by Followers of July 12, 1942 (Reichsgesetzblatt I, pp. 466-467) as well as the Implementing Ordinance on the Ordinance on the Treatment of Inventions by Followers of March 20, 1943 (Reichsgesetzblatt I, pp. 257-260)
^ Peter Koblank: The Goering Speer Ordinance. Employee Invention Law in the Third Reich , December 2012, available online (with the full text of the ordinance and the implementing ordinance) in: Best of Koblank .
^ Heinz Goddar: The legal situation of employed inventors. Legal framework of the relationship between employed inventors and employers. Incentive systems encouraging creativity . 2003 ( wipo.int [accessed on May 13, 2009]). Heinz Goddar: Compliance with the German Employees' Invention Law in the Handling of Inventions Developed by Universities . ( washington.edu [PDF; accessed May 13, 2009]). Dr. Jürgen Meier: The Right to a European Patent and the German Act on Employee's Inventions . 2006 ( lls.edu [accessed May 13, 2009]).

↑ Urs Straube, Apley & Straube Partnership Patent Attorneys: The reformed procedure for reporting and claiming employee inventions " . 2009 ( patentanwalt-baden.de [PDF; accessed on August 9, 2010]). The reformed procedure for reporting and claiming employee inventions" ( Memento of the original from July 21, 2013 in the Internet Archive ) Info: The archive link was inserted automatically and has not yet been checked. Please check the original and archive link according to the instructions and then remove this notice.

↑ Urs Straube, Apley & Straube Partnership Patent Attorneys: Invention Disclosure . 2009 ( patentanwalt-baden.de [accessed on August 9, 2010]). Invention disclosure ( Memento of the original dated July 24, 2014 in the Internet Archive ) Info: The archive link was inserted automatically and has not yet been checked. Please check the original and archive link according to the instructions and then remove this notice. @1@ 2

[1] Dietmar Harhoff, Karin Hoisl: Institutionalized Incentives for Ingenuity - Patent Value and the German Employees' Inventions Act . November 28, 2006 ( uni-muenchen.de [accessed December 20, 2010]).

[2] Michael Trimborn, Bernd Fabry: The right of the employee inventor in the international overview . In: Communications from German patent attorneys . tape 100 , no. 12 . Heymanns, December 2009, p. 529-576 .