Employee invention in GER - duty to provide information

The employer's and the employee inventor's duty to provide information is regulated in § 15 of the German Employee Inventions Act (ArbErfG).

Accordingly, the employer must provide the employee inventor with copies of the application documents and also inform him/her of the further progress of the procedure.
In turn, the employee inventor must support the employer in the acquisition of property rights upon request (§ 15 (2) ArbErfG)

As is so often the case in business practice, further questions arise in this context, some of which we will clarify here.

If the employer breaches its duty to inform

What happens if an employer unknowingly or deliberately breaches its duty to provide information?

After all, the principle of "good faith" (§ 242 German civil code (BGB)) prevails throughout legal life. And this does indeed give rise to a duty to provide information to the employer under employee invention law. However, this applies in particular with regard to the inventor's remuneration and the specific amount of remuneration. According to § 9 ArbErfG, an employee inventor is entitled to appropriate remuneration. Paradoxically, however, he has the burden of presentation and proof for the circumstances that justify his claims. However, only the employer knows the essential parameters for this. For this reason, there is an obligation to provide information under employee invention law.

The situation is somewhat different with regard to the duty to provide information. However, if an employer breaches its duty to provide information pursuant to § 15 ArbErfG, it depends on the circumstances whether this has consequences for the employer.

A breach of the duty to inform may even have no consequences and no repercussions for the employer. This is the case if the inventor's suggestions, which could have been expected if the information had been provided in good time, could not have significantly improved the procedural situation. (see the arbitration board's settlement proposal 49/03 from 2008).

If the employer gives up the property right

A special situation and obligation to inform arises if the employer decides to give up the property right position. According to § 16 ArbErfG, it is the employer's duty to inform the employee inventor of this planned step and to offer to take over the relinquished property right position.

When declaring the intention to relinquish, the employer is also obliged to inform the employee about existing rights to the property right position, such as licences granted, on the basis of the duty of care under employment law pursuant to § 241 (2) BGB. This is because this information is relevant for the employee inventor's decision as to whether to take over the property right position.

It is important to know that the claims from a licence agreement concluded before the transfer are transferred to the employee inventor - but only to the extent that these claims are causally owed exclusively to the property right position. Since the company's know-how always plays an important role, the Arbitration Board generally assumes in its decision-making practice that the company is responsible for the majority of the creation of the service invention, often over 80 %.

Conclusion

The Arbitration Board of the German DPMA explained in its proposal Arb.Erf. 42/20, which dealt with the right to use the released employee invention, that the duty to provide information under § 15 ArbEG has lost much of its significance.
In the opinion of the Arbitration Board, inventors can nowadays obtain an insight into the status of a property right position themselves online at any time and free of charge, which is why the Arbitration Board no longer considers the information obligation under § 15 ArbErfG to be so important.

Do you have questions about inventor's remuneration or would you like to find out about an entitlement to inventor's remuneration for yourself or your employees?
We are a patent law firm with a great deal of expertise in employee invention law and offer the calculation of legally compliant inventor remuneration with a fixed price guarantee.

Please contact us by telephone on +49 (0)69 69 59 60-0 or info@kollner.eu.