Case provides legal certainty for employers and employee inventors

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Case provides legal certainty for employers and employee inventors

Sponsored by

maiwald-logo-cropped.PNG
Hand holding light bulb and cog inside. Idea and imagination. Creative and inspiration. Innovation gears icon with network connection on metal texture background. Innovative technology industrial.

In Germany, inventions which are created by employees during the term of their employment, so-called service inventions, are subject to the Act on Employees' Inventions (ArbnErfG). According to the act, all rights in the invention are assigned to the employer if the employer does not release the invention to the employee.

In case the employer intends to discontinue an application for intellectual property rights in a service invention or to cease to maintain granted intellectual property rights in the invention before having satisfied the employee's claim for reasonable compensation, the employer must notify the employee accordingly and must assign these rights to the employee on the employee's request. If the employee does not request the assignment of these rights within three months from receiving the notification from the employer, the employer shall be entitled to abandon the above rights according to §16(2) ArbnErfG.

In 2019, the Regional Court of Mannheim was the first court which had to discuss whether §16(2) ArbnErfG not only determines the point in time the employer is entitled to abandon the rights in the invention, but whether it also precludes the employee's entitlement to request the assignment of the rights after the expiry of the three-month period. In the case, the employee requested the assignment of patent rights only after the expiry of the period under §16(2) ArbnErfG, and the employer changed its will on the abandonment of the patent subsequently. The Regional Court found that §16 (2) ArbnErfG does not determine a preclusive period, with the expiry of which the employer has a new right to decision-making or the employee can no longer assert a claim for transfer. The employee's complaint regarding the assignment of rights was thus successful in the first instance (judgment of 12 April 2019, 2 O 63/18).

The Higher Regional Court of Karlsruhe overruled the judgment of the Regional Court in a recent decision (judgment of 24 June 2020, 6 U 59/19) and confirmed the prevailing opinion in literature that the employee has no entitlement to the assignment if the employer receives the corresponding request only after the expiry of the period under §16(2) ArbnErfG. The Higher Regional Court found that a different interpretation of the provision would lead to significant uncertainties for the employer. In view of the employee's continuing claim for reasonable compensation in case the employer changes its will and the invention is used further, no disadvantages covered by the protective aim of the act could be seen for the employee.

Due to the fundamental importance of the point of law, a revision by the Federal Court of Justice (BGH) was allowed.

friedrich-anja.jpg

Anja Friedrich

more from across site and SHARED ros bottom lb

More from across our site

Beatriz Lima joins us for our ‘Five minutes with’ series to discuss a recent victory at the Unified Patent Court and the challenges of establishing your own firm
International intellectual property experts will be addressing AI, the Unified Patent Court, monetisation strategies, and more at the event in Munich in November
Former White & Case partner joins HSF Kramer’s New York office to head up US technology transactions practice and strengthen firm’s IP and tech capabilities
Gateley has acquired Groom Wilkes & Wright to add to its two previous IP-related acquisitions
Molly Kocialski, who has joined Holland & Hart after nearly a decade as a USPTO regional director, discusses career shifts, resilience, and overcoming casual sexism
News of Bird & Bird launching a new office and InterDigital appointing a new chief licensing officer were also among the top talking points
Brian Horne reveals how his team secured a favourable damages outcome in a patent and trade secrets case involving X-ray technology
The five-partner team enhances Sheppard Mullin’s technology and life sciences capabilities, expanding its IP practice to more than 130 practitioners
In an exclusive interview, Rouse CEO Luke Minford, Arnold & Siedsma managing partner Steve Duxbury, and Wrays executive chairman Gary Cox discuss plans to build the world’s first ‘truly integrated’ global IP services business
Benjamin Grzimek, partner at Casalonga’s new Düsseldorf office, believes the firm is well-placed to challenge German UPC dominance
Gift this article