Austrian rules on remuneration for inventions made by employees are in several aspects quite different to those in Germany. Two of them are highlighted here.
In Austria, the employer is free to decide whether he applies for patent or utility model protection for inventions made by his employees and where he wants such protection without the employee having the right to obtain protection in the countries not selected. Likewise, he is free later on to withdraw the applications or granted rights or let them lapse without any obligation to the employee. All that is irrespective of his obligation to pay adequate remuneration for his use of the invention.
In a recent decision, the Austrian Supreme Court (OGH, 4.8.2009, 9 ObA 39/o8p) ruled on the type of monetary reward payable to the employee. According to the Austrian Patent Law, the employer can always enter into an agreement with his employee to pay a lump sum as remuneration. However, that lump sum must be calculated on the basis of the value of the invention for the employer for the whole foreseen (future) use period at the time of the agreement or, in other words, on the basis of the foreseeable whole turnover. If later on it turns out that the basis for the calculation of the lump sum has essentially changed, the Patent Law gives the employee a right to demand an additional payment, which can be exercised only once a year but each time such an essential change with regard to the previous calculation can be proven.
The employee's rights are secured in two ways. First, any amount received or due does not have to be paid back even if it turns out that the original or consecutive estimates were too optimistic. Second, any part of the agreement with the effect of hindering the employee from using his right and requesting an additional payment is null and void.
The decision also addresses a further aspect. As long as the employer uses the invention, the remuneration has to be paid, even when it turns out that there exist patent-free alternatives. However, such alternatives will lower the value of the invention and thus the remuneration due. In fact, only the advantages of the employer in using the invention in comparison with using the alternatives will be the basis for the remuneration. These would mostly be lower in-house costs.
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| Helmut Sonn |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
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office@sonn.at
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