A German company as an employer is generally entitled to the rights to the inventions of its employee if the invention is made in a field of technology related to the regular duties of the employee.
In return, the employer is obliged to file a patent application with effect for Germany for an invention potentially patentable or, if this appears to be more appropriate, a German utility model. Furthermore, and sometimes more importantly, the employer is obliged to reimburse the employee as soon as the invention is commercially used. Reimbursement calculations follow a quite difficult statutory scheme. Alternatively, the employer can try to enter into a lump sum agreement with the inventor under certain circumstances.
If the employer wants to prevent the invention from becoming public in the form of the mandatory patent publication, for instance because the employer does not want to disclose company knowhow, the invention can be treated as a trade secret. If the employer does not want to make use an employee’s invention, the employer has to release the invention within a legal term and the employee can thereafter freely utilize the invention. The same holds for subsequent applications such as national or international applications claiming the priority of the first, mandatory application. If such subsequent applications are not intended, the employer must allow the employee to use the priority right wherever the employer does not intend to seek protection.
Detailed questions on employee invention law can become very complex. For example, it can be crucially important when and in what form the employee’s invention is reported, and it is therefore recommended to establish a company-wide reporting scheme for employee’s inventions. It is also difficult to assess patentability on a case-by-case basis. Our German patent attorneys at Dehns specialize in such questions and have extensive experience in reimbursement calculations as well as lump sum agreements. We are happy to advise you on all levels of employee invention law all the way to establishing a company-wide solution.