Invention disclosure - Employee invention in Germany

In many companies, there are regulations and forms to get notice of employee inventions. However, inventions are also mentioned in other ways: for example, meeting notes that there could be patentable ideas or a short email that an invention has been made. Is this an Invention disclosure under the German Employee Invention Act (ArbnErfG)?

Invention disclosure: requirements

The requirements for the invention announcement of an employee invention are governed by § 5 ArbnErfG. An invention disclosure must be delivered to the employer
i) in text form and as a separate document
ii) without delay
iii) with clear wording that it is a disclosure of an invention (the exact phrases "invention" and "disclosure" do not necessarily have to be included)
(iv) the content of the technical problem, its solution, and how the employee invention came about
(v) the nature and extent of the inventor’s (and any other co-inventor’s) contribution to the invention
vi) naming the co-inventors: In the same area of responsibility, stating the name if possible. Otherwise, it is sufficient to name the unit concerned.

This was confirmed by the BGH (Bundesgerichtshof, Engl.: (German) Federal Supreme Court)I in the decision "Fesoterodine hydrogen fumarate" (X ZR 148/17. Although this BGH decision referred to the former version of the ArbnErfG (valid until 31.08.2009), the requirements for the invention disclosure mentioned by the BGH also apply in general. The BGH added some aspects about the requirements for the invention disclosure, among which we would like to highlight two:

vii) If the employer receives an original notification signed by the employee, this fulfills the requirement of written form according to BGH. This provision does not contain any further requirements about the addressing or the method of transmitting the notification to the employer.

viii) The invention disclosure may also contain a summary of different formulation concepts, methods, and forms of presentation - as long as they concern the same technical problem, are based on a common approach, and the invention disclosure is recognizable as such in the abundance of internal correspondence.

A) Proper invention disclosure -> Obligations for the employer

In principle, every invention disclosure triggers obligations for the employer. First, the employer is obliged to confirm the date of receipt of the report to the employee in text form without delay (§ 5 (1) ArbnErfG). Everything else depends on the type and manner of the invention disclosure.

Proper invention disclosure
If the invention disclosure is duly, the employer must file an application for any patentable employee invention "without delay". Exceptions to this obligation are set out in § 13(2) ArbnErfG, for example, if the employee consents to the non-application.

Flaws in the invention disclosure
If there are deficiencies in the invention disclosure, the employer can - and must - object within two months after receipt of the invention disclosure, giving reasons. After this period, the invention disclosure is considered to have been duly submitted, irrespective of its form and content.
Due to § 5(3) ArbnErfG, the employer must assist the inventor in supplementing or correcting the invention disclosure "to the extent necessary".

Incidentally, according to the German Arbitration Board's decision (Arb. Erf. 10/18), all acts of exploitation carried out from time onwards of the receipt of the invention disclosure are subject to inventor remuneration as soon as a proper invention disclosure has been received. However, if the employer objects to the invention disclosure, the employee does not necessarily have an immediate claim to remuneration. Only when the objected invention disclosure has been improved and received by the employer as a complete and thus effective invention disclosure are all exploitation acts subject to remuneration.
The employer cannot delay the receipt of valid invention disclosure and the associated triggering of the remuneration claim by further objections (Arb. Erf. 37/19).

Not patentable
If the employer does not consider the invention patentable, it is not sufficient to inform the inventor. In such a case, the ArbnErfG obliges the employer to appeal to the Arbitration Board to find an agreement on the question of patentability. Alternatively, the employer can also release the invention. Both must be done within four months after receipt of the invention disclosure.

Delayed response or no response at all
If an employer responds late or not at all, four months after receipt of the invention disclosure, the fiction of claim’ comes into effect. However, an employer can still release the invention (and thus avoid the fiction of claim) even after the expiry of the four months, and without the consent of the employee-inventor. The prerequisite for this is that the invention has not yet been registered for an IP right.

B) Reporting a ‘technical improvement'

However, if the invention is announced as an improved work result or as a technical improvement proposal, no claims under the employee invention law usually arise.
Although a technical improvement proposal can trigger a claim for compensation under § 20 ArbnErfG, equivalent to a patentable employee invention - this rarely happens in practice. This is because such an equalization only comes into question if a de facto monopoly position can be achieved by using the technical improvement proposal. It also presupposes that the company has made use of this improvement proposal. But then the company would probably seek a property right for it.

And who owns the notified technical improvement proposal?

The employer is entitled to ownership of the technical solution as such as soon as it is announced as an ‘"improvement proposal"’. This is because it is considered a work result according to § 611a BGB (German Civil Code) and is finally paid by the salary. Additional remuneration may be conditional on a collective or works agreement, but this is not a claim under German employee invention law.

C) No invention disclosure at all

If there is no invention disclosure at all for a patentable invention, there may still be a claim to remuneration. However, according to general case law, if there is no written invention disclosure, the disclosure may be "exceptionally" dispensable, namely if the employer is aware of both the nature of the invention and the persons involved in the invention even without an invention disclosure.
According to the BGH decision "Lichtschutzfolie" (BGH 14.02.2017, AZ. X ZR 6415), filing a patent application generally has the same effect as an invention disclosure that is duly in form and content.

Conclusion

Although there are minimum legal requirements for proper invention disclosure, filling out a company form is not one of them. Moreover, the method of transmission of the invention disclosure is not relevant and therefore an invention disclosure can also be sent by e-mail, for example. And employers must note that they must respond to every invention disclosure, even to invention disclosures not due to form.

Do you have questions or uncertainties regarding employee inventions?
Don’t hesitate to get in touch with us by phone +49 (0)69 69 59 60-0 or by e-mail: info@kollner.eu.