If the employer has not yet applied for a patent for a service invention, he can release the invention to the inventor even after it has been claimed, without his consent being required, and even long after the expiry of the 4-month period. “Patentable ideas” were communicated by e-mail and led to unintentional claim after German Employee Invention Act.
This remarkable decision is part of a case in which the employee inventor communicated “patentable ideas” by e-mail and this led to unintentional claim. In this case, the Arbitration Board of the German Patent- and Trademark Office (DPMA) made important decisions on the validity of an invention disclosure and on the release of an invention after claim.
Effectiveness of an invention disclosure
According to the Employee Invention Act, an employed inventor is obliged to notify his employer of a service invention in an orderly manner (§ 5 (1) ArbEG). This shall also be deemed to have been fulfilled if the service inventor speaks in an e-mail to the employer of “patentable ideas” and points out that he is doing so in accordance with the Act on Employee Inventions.
If the employer disagrees, he has various options according to the Employee Invention Act (ArbEG): on the one hand, he can complain about the proper notification, which would have been obvious with this form of invention notification. However, this is only possible within a period of two months after the invention disclosure pursuant to § 5 (3) ArbEG and must be done with a statement of reasons for the complaint.
Instead, the employer had replied to the inventor that the invention was “not a patentable invention or a technical improvement under the German Law on Employee Inventions”. However, this is not a relevant rejection or release of a service invention. If the employer does not consider the invention to be patentable at all, he is obliged under § 17 (2) ArbEG to appeal to the Arbitration Board (§ 29) for an agreement on the protectability of the service invention. Alternatively, he can release the invention within a period of four months after receipt of the invention disclosure pursuant to § 8 ArbEG, in which case all rights to the invention pass to the inventor if he claims the release of the invention. Neither, however, has happened in the present case.
Fiction of utilisation
If an employer does not respond sufficiently within the meaning of the ArbEG or does not respond at all, the fiction of recourse pursuant to § 6 (2) ArbEG applies. Accordingly, an employer must declare the release to his employee in writing and within 4 months of the inventor’s notification, otherwise the invention is deemed tacitly claimed by the employer.
As a result, all property rights to the service invention were transferred directly to the employer in accordance with § 7 ArbEG – although the employer believed that he had long since rejected the patent ideas and had also declared that he did not wish to use the invention. For this reason, the inventor was entitled to remuneration from the employer pursuant to § 9 (1) ArbEG.
Since the employer did not want to use the invention under any circumstances and questioned the entire claim, he evaded any obligation to pay the inventor compensation by releasing the invention – however, long after the four-month period provided for this after receipt of the invention disclosure (more than 3 years after the invention disclosure). The Arbitration Board therefore had to decide whether such a late release was admissible.
Late release according to § 8 ArbEG possible?
The ownership of a service invention and the associated duties, including any obligation to pay remuneration, can be discharged by the employer even after the claim has been made, namely by release according to § 8 sentence 1 ArbEG or according to § 16 para. 2 ArbEG, the Arbitration Board explained. If the employer has not yet applied for the service invention to be granted a patent, a release pursuant to § 8 sentence 1 ArbEG could be considered. Such a release would be the exercise of the employer’s right to organise. The consent of the inventor was therefore not required for this.
If, on the other hand, the employer has already applied for the service invention for the grant of a patent, there is no longer any room for a release according to § 8 sentence 1 ArbEG, because § 16 para. 2 ArbEG covers this case as lex specialis, the Arbitration Board specified.
Employers should not be forced to file an unwanted patent application
The Arbitration Board justified the fact that the release of an invention after claiming but before filing a patent application is also permissible under § 8 ArbEG long after the expiry of the 4-month period by considering the basic idea of the corresponding legislation. The Arbitration Board stated that there was no need for a release option under § 8 sentence 1 ArbEG during the term of the claim deadline, as the release was already possible under § 6 (2) ArbEG for this period. It can therefore be assumed that the legislator did not intend an employer to be forced to apply for an unwanted patent application after the expiry of the four-month claim period in order to be able to release the unwanted service invention following the application pursuant to § 16 (2) ArbEG.
Only if the employer wanted to reserve the right to use the invention despite the release (§ 16 (3) ArbEG) would he first have to take the path of a patent application at his own expense. However, this did not apply in the present case. Therefore, the Arbitration Board decided that the release of an invention after claiming but before filing an IP application is also permissible after expiry of the four-month claim period pursuant to § 8 ArbEG – even without the consent of the inventor.
Ultimately, however, this decision does not lead to a year-long option for employers to be able to release a service invention at low cost after it has been claimed. This is because employers are obliged to apply for a patent for an invention in a timely manner – without delay pursuant to § 13 (1) ArbEG – in order to secure the corresponding priority for the invention. If an employer files the service invention too late or not at all, the inventor can assert a claim for damages.
In the present case, the employer was liable to pay compensation to the inventor until the time of the much too late release of the invention, which was nevertheless admissible.
Are you concerned about the claims arising from employee’s invention or are you thinking of a claim for damages?
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Decision of Arbitration Board of DPMA Arb.Erf. 71/16
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