Employee invention in GER: Inventor's share among co-inventors

Who is considered a co-inventor of an employee invention in Germany?
And what is the inventor's share of an employee who had the actual idea for the technical solution? Is this employee entitled to a particularly large inventor's share?

A conciliation and agreement was currently sought before the Arbitration Board in the settlement proposal (Arb.Erf. 53/20) for such a case. It was undisputed - also between the co-inventors - that a certain employee (hereinafter referred to as "the respondent") had had the idea for the invention as such. Indeed, he was called in by the development department in the hope that he might have an idea for the technical solution, although he did not belong to the design and development department.

In the end, the respondent probably made a decisive contribution to the applicant (i.e. the employer) being able to solve a serious and current problem, although this was not one of his original tasks, the Arbitration Board summarised the facts of the case.

Who is considered a co-inventor and with which inventor's share?

Who is then considered a co-inventor of the employee invention and with what inventor's share? Usually, the invention disclosure is prepared by the development department, as is the case here. The respondent will only have been presented with the invention disclosure for signature, the Arbitration Board assumes this to be probable, which he then signed "en passant" at his workplace without being familiar with the remuneration of employee inventions.

In any case, the invention disclosure had been signed by the respondent as well as by all other co-inventors, with co-inventor shares of 25%, including for the respondent.

Subsequently, the defendant claimed that he was entitled to a much larger inventor's share. Specifically, the defendant considered his co-inventor share to be at least 70% and claimed a much higher inventor's remuneration overall.

Inventor's share among co-inventors

Is the inventor entitled to a higher inventor's share among the co-inventors, in particular if he was not familiar with the remuneration of service inventions, as was the case here?

No, the Arbitration Board found, it is not relevant whether a co-inventor is familiar with the calculation of inventor remuneration when reporting the invention.
According to the Federal Supreme Court (Bundesgerichtshof, BGH), the invention disclosure is not a declaration of intent but a declaration of knowledge and is bound to the truth. It is intended to ensure that the employer can make a proper decision on the content of invention and on the determination of a remuneration to all co-inventors (BGH of 4 April 2006 - Case No.: X ZR 155/03- Haftetiket).

In 2019, the BGH added the decision Fesoterodine hydrogen fumarate (X ZR 148/17) to the case-law and the finding that the employer must be able to ascertain from the inventor's disclosure that co-inventors were involved and how to determine them and their shares. According to the BGH, the person filing the invention disclosure is required to specifically name the co-inventors from his own area of responsibility; with regard to the participation of employees from other areas of the company, on the other hand, it is sufficient to state the relevant organisational unit. Please read our article Co-inventors in companies about this decision.

In case here, however, the respondent had signed the invention disclosure in which his inventor share was stated as 25%. The employer therefore had no reason to doubt this statement or to determine a higher inventor's share.

Moreover, an invention is much more than an idea, the Arbitration Board noted. An invention is a new technical teaching executable by a person skilled in the art for solving a technical problem, in the present case this was a process with seven process steps. The idea for the technical solution is very important, but not the sole contribution to an invention.

Disputes about inventor's share - not a task of the Arbitration Board

In any case, the clarification of disputed inventor's shares among co-inventors is not one of the tasks of dispute resolution by the Arbitration Board.

This is because such a decision on a co-inventor's share always also affects the inventor's shares of the other co-inventors (de facto, their inventor's shares would be reduced if those of the defendant were increased) and therefore requires the full range of procedural instruments for clarification that are available to the courts, but not to the Arbitration Board.

Moreover, the right to co-inventorship is exclusively regulated in the German Patent Act (in § 6 Patent Act), but not in the Employee Inventions Act. A dispute about the inventor's share must therefore always be settled in court in Germany.

But, the amount of the remuneration and the inherent appreciation of the inventor's contribution to the invention does not only depend on the inventor's share, but also on the invention value and the share factor.

Appreciation of the performance of the inventor by the share factor

Instead of using the question of the inventor's share to assess the performance of the inventor and thus opening up a problem area in the settlement of the other co-inventors, the Arbitration Board proposed to increase the share factor of the applicant from 19.5 % to 30 %. This is the absolute upper limit of the share factors that occur in the constant practice of the Arbitration Board.

A share factor, mentioned as a percentage value, basically depends on the advantages the employee had over an outside inventor in the creation of the invention and to what extent the invention is therefore attributable to the enterprise.

The proportional factor is determined by asking questions in accordance with the corresponding guidelines on the perspectives
a) "Position of the task" (value number "a"),
b) "solution of the task" (value number "b") and
c) "Position of the employee in the company" (score "c").

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