Under German law, the rights to an invention made by an employee in the course of his employment duties originally belong to the employee-inventor. According to the German Employee Invention Act, they do not become the property of the employer until the employer has declared by a formal act (handwritten signature still required) that it claims title to the invention. If the employer fails to do so within a four (4) month period, starting with a formal notice from the employee according to the minimum requirements in Section 5.1 of the Employee Invention Act, such invention remains the property of the employee. The law is binding in this matter; deviation clauses in employment contracts contravening this law are not enforceable in court.

In the past, it was an established practice in Germany that in those cases, where the employee's notice of the invention had not met the necessary formal requirements, the 4-month period to claim title had not begun. However, it appears that the German Federal Supreme Court (BGH) has now abandoned this established practice: According to its "Haftetikett"-Decision of April 4, 2006 the 4 month time period may automatically commence, once the employer "receives sufficient knowledge" that an invention has been made. At the latest it will start — even in the absence of a formal notice of the invention — once the employer files a patent application for the invention.

Companies operating under German law may in the future have to adjust their in-house procedures regarding employee inventions. It is not longer sufficient to rely on the receipt of a formal notice by the employee-inventor, to decide internally within the 4-month period whether title is to be claimed. Rather, according to the a.m. decision, the "clock starts ticking" already once the employer receives sufficient knowledge that (a) an invention has been made, (b) what it is and (c) the name of the inventor(s).

If you would like to learn more about this issue, please contact Matthias Gottschalk by e-mail at Gottschalk@maiwald.de.

About the author: Matthias Gottschalk, a licensed attorney under German law, is a senior associate with Maiwald Patentanwalts GmbH (www.maiwald.de) and is working both in the Munich and Zurich, Switzerland offices of the firm. He specialises in trademark, design and unfair competition law as well as employee invention law and licensing law.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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