• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Exhaustion of patent rights among patent co-owners

7. December 2020

If a Community employee invention protection law is initially in intermediate products of suppliers, does this lead to Exhaustion of patent rights among? No, because patent rights are only exhausted when a patented product is put on the market: interesting for all industries with intermediate products as well as the automotive industry.

AutomobilindustrieThe fact that one co-owner of a patent supplies the other co-owners of a patent with objects that are in accordance with the invention is not so rare in practice. For example, in the automotive industry, a joint employee invention protection right is first used in intermediate products of the (automotive) supplier and then in end products of the (automotive) manufacturer. The same happens in other industrial sectors.

Exhaustion of patent rights among co-owners

This makes the question of the exhaustion of patent rights among co-owners all the more important. To this end, the Arbitration Board of the DPMA affected an unofficial leading decision. Only if the patent holder has put a patented product on the market compared to a non-patent holder, the patent right will be exhausted, was the decision of the arbitration board in April 2012 (Arb.Erf. 23/10). However, as long as the co-owner of the patent merely supplies the other co-owner of the patent with objects which are in accordance with the invention, no exhaustion of the patent right can occur.

In concrete terms for the automotive industry, this means that employees of the supplied (automotive) manufacturer are entitled to an inventor’s compensation if a joint service invention protection right is first used in intermediate products of the (automotive) supplier and then in end products of the (automotive) manufacturer.

Incidentally, the claim for compensation for an employee invention expires after three years, the claim for damages (also with respect to a service invention and its compensation) after 10 years.

Exhaustion of the patent right

Decades ago, the German Federal Supreme Court of Justice (BGH GRUR 73, 518, 520 – Spielautomat II; BGH GRUR 59, 232, 233- Förderrinne) also expressed its opinion on the exhaustion of patent rights.

According to this, a patent holder may

  • use the invention itself,
  • for a consideration (license fee), transfer this right to another person or distribute it among several other persons (Sec. 15 PatG) and
  • sell the patent.

However, the patent right is exhausted if the patent holder or – with his consent – another person has put the patent object into circulation.

Intended use and new production?

It is difficult to distinguish between the distinction between the intended use of a patented product and its permissible repair and an inadmissible new manufacture of the product. This applies all the more if the function or performance of the specific product is impaired in whole or in part by wear and tear, damage or for other reasons. Relevant for this distinction is whether the parts in question are individualized parts with regard to their inventive function.

Employee invention in a module

And also with regard to a employee invention in a module with several elements, decisions of the arbitration board are available. If an invention relates to a mechanism within a module containing several elements, then only the new elements in accordance with the invention are relevant as a technical-economic reference value for the inventive value. On the other hand, the elements still contained in the module apart from the mechanism are not relevant for the inventive step if they are known in the sense of the technical teaching of the invention – even if these elements are functionally necessary for the module.

Questions about employee inventions?

Our patent law firm has extensive expertise in the field of patent law and the law governing employee inventions. We will gladly represent your interests both before the arbitration board and in court proceedings, both in Germany and internationally. If you are interested, please contact us – we look forward to


 

Sources:

Arb.Erf. 23/10 vom April 2012

Image:

RitaE | pixabay.com | CCO License

 

 

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconPatent Law Tag iconautomotive industry,  Placing on the market,  employee invention,  automotive supplier,  exhaustion of patent rights,  use or new production,  module,  invention in module,  license rates in automotive industry,  patent co-owner

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Patent Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Chianti vs GHISU: advantage taken unfairly of the earlier mark 15. April 2021
  • ECJ on legitimate interest: Appeal against amendment of specifications 15. April 2021
  • Case law product similarity: consumer attention 13. April 2021
  • OLG Düsseldorf: No compensation for damages of gratuitous licensing 9. April 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

8. April 2021
Hitachi patent partially invalid in GER: code distribution for mobile communication

Hitachi patent partially invalid in GER: code distribution for mobile communication

29. March 2021
EuGH / Case Lundbeck:  Restriction by object

EuGH / Case Lundbeck: Restriction by object

23. March 2021
Employee’s invention with software

Employee’s invention with software

22. March 2021
EPO Statistics: Western world less innovative

EPO Statistics: Western world less innovative

19. March 2021
Enlarged Board of Appeal: Mixed inventions with computer

Enlarged Board of Appeal: Mixed inventions with computer

18. March 2021
Market Abuse SEP Data Package: OLG Karlsruhe

Market Abuse SEP Data Package: OLG Karlsruhe

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form