Section 03

Employee Inventors Law

Fabry, B., Trimborn, M.
Employee invention law – an international overview
Carl Heymanns Verlag, München, (2006)
EUR 108,-

Trimborn, M., Fabry, B.
Worlwide employee invention law
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 529, 2009

The question concerning the right to the invention which is especially of importance when it is about the transfer of employee inventions, the formal requirements and the deadline as well as the obligation of remuneration is globally regulated in very different ways. In Germany, USA and Japan, the right to the employee invention is entitled to the employee and the transfer needs a contractual agreement on the transfer to the employer. However, in France and Spain, for example, this is judged very contrarily. States such as Great Britain or Brazil or even the USA do not know said obligation of remuneration, whereas a remuneration according to the economic utility beyond the income is prescribed in most of the other industrialized countries. Caution should be exercised for the handling of inventions made in connection with university cooperations in the USA and Great Britain. Even these few examples show that companies whose R&D is internationally positioned are well-advised to study the relevant requirements precisely if they do not want to run the danger to lose the inventions due to a lack of transfer of rights to the employee inventor and to be confronted with unexpected remuneration claims.

Fabry, B. Vo, T.A.
Rights to inventions in China
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 541, 2012

Within the last 10 years, the Chinese patent system has made great progresses. Not only the number of national applications and grants has overtaken the one of foreign applicants in China, Chinese companies have also gained first row places in the concert of international applicants. With the increasing number of infringement litigations which are increasingly done by Chinese companies, not only the competent court’s experiences especially in Shanghai and Beijing has increased, but the increasing pressure within China makes the jurisdiction adapt to a standard that is similar to the one in industrialized countries. However, this may not belie the present deficiencies. The jurisdiction beyond the metropolises still advantages the domestic patentees and patent infringer. The requirements concerning the transfer of technology are complex and really bureaucratic what especially complicates the exchange of licenses within business groups with Chinese shares. Even the employee inventor’s claim to obtain an adequate usage remuneration is comparable to the one of a German inventor, especially when correlating the level of the claim and the average income. Although the long lasting prejudices against patent aplications in China are nowadays outdated in general, it is to be said that in connection with the rights to an invention in China, a large number of requirements which are no common knowledge for West European applicants is to be respected.

Fabry B., Trimborn M.
the right of employee-inventors in Austria
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 500, 2015

The rights of an Austrian and a German only seem to be the same at first sight. Indeed, there are heavy differences starting with the fact that in our neighbor country, there is no assignment of rights but after notification of invention, the employer has the duty to claim the invention within 4 months in writing according to German ErbEG. In case of university invention, the deadline can be reduced to 3 months. At this point, Austrian law is advantageous as it privides the possibility of healing a lack of timely claim of invention through conclusive action namely through the filing of the corresponding patent application in contrast to German law. In this case, the employee must only confirm his inventorship. The clalculation of remuneration is made the same way as in Germany namely through license analogy. However, instead of the personal royalty rate, a so-called “Reduktor” (comp. reducer) is applied which can be between 3 and 30 % and reflects the inventor’s position as well as the meaning of invention. According to Austrian law, even non used inventions must generally be remunerated what significantly differs from German practice. In case of doubts, the employer has to prove that a usage is either impossible or unreasonable. In particular, this poses problems when it is about property rights which block alternative procedures for competition.