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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.


Anja Friedrich

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