Case provides legal certainty for employers and employee inventors

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

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

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article