Frequently Asked Questions

Compiled by Rob Harrison.
These are only intended as a general guide to German Law, please contact me on rob.harrison@munich-ip.de for more detailed information.

Contents

 

Ø      What form does the notice of the invention ("Erfindungsmeldung" have to take?

 

Ø      Do I have to claim the rights to the invention?

 

Ø      Does the employee have to agree to the claim?

 

Ø      What happens if I don’t claim the invention within four months?

Ø      What happens if the notice f the invention is not understandable?
Can I ask the inventor to provide more details?

 

Ø      How high is the special compensation?

 

Ø      Can I transfer an employee’s invention to another company?

 

Ø      Do I have to offer the employee the patent?

 

Ø      Can the employee transfer the patent to a competitor?

 

 

 

What form does the notice of the invention ("Erfindungsmeldung") have to take?

 

The invention disclosure—called the Erfindungmeldung in German— has to be filed in writing and signed by the inventors. It does not have to otherwise take a particular form. It should, however, be clearly labelled as an invention disclosure. The invention disclosure should include detail of the problem to be solved, its solution, and how the solution was reached.

 

Invention disclosures filed by e-mail or by fax are technically not acceptable since under (current) German law these are not regarded as being signed documents. However, if the employee files the disclosure by one of these methods and the employer treats the disclosure as a valid notice of the invention, then this document ill be accepted as a valid invention disclosure.

 

For inadequate or incomplete invention disclosures, see below

 

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Do I have to claim the rights to the invention?

 

The employer does not have to claim the rights to the invention (“Inanspruchnahme”). However, if he does not do so within the time limit (four months) then the invention becomes “free” and the employee inventor is free to do whatever he wants with the invention. In particular, the employee can offer the invention to a competitor.

 

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Does the employee have to agree to the claim?

 

No. The claim is a one-sided (unilateral) act by the employer.  The employee does not have to agree to the claim of rights by the employer. It can, however, be useful to ask the employee to acknowledge receipt of the claim by, for example, initialling a copy of the claim notice.

 

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What happens if I don’t claim the invention within four months?

The law sets a time limit of four months from receipt of the invention disclosure for the invention to be claimed by the employer. If the employer does not do so within the time limit (four months) then the invention becomes “free” and the employee inventor is free to do whatever he wants with the invention. In particular, the employee can offer the invention to a competitor.

An employer who misses the four-month time limit can, however, still ask the employee to transfer the rights to the invention. If the employee agrees, then the rights to the invention will be transferred to the employer.

 

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What happens if the notice of the invention is not understandable?
Can I ask the inventor to provide more details?

 

The employer can ask the inventor to provide more details about the invention within two months of receipt of the invention disclosure. If the employer does not do this within the time limit, then the originally filed invention disclosure is treated as adequate.

 

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How high is the special compensation?

 

The level of compensation (“Erfindervergütung”) depends on the value of the invention to the company, the contribution that the inventor made to the development of the invention, the position the inventor holds within the company and the education level of the inventor. The German Federal Labour Ministry has issued guidelines for the calculation of the level of inventors’ compensation, which can be used as a guide.

 

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Can I transfer an employee’s invention to another company?

 

In short: yes. However, the invention or intellectual property rights cannot be transferred in order to avoid payment of the inventors’ compensation. If an invention is transferred, then the employee inventor can still expect to be compensated. This compensation could be based on the proceeds from the sale of the invention or from the benefit otherwise derived by the employing company.

 

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When I have to offer the employee the patent?


If the employer is no longer interested in maintaining the patent in a country, then the inventors must be offered an opportunity to take over and maintain the patent at their own expense. There is one exception to this rule: if the inventor has been fully compensated by the employer for the use of the patent and the employee has accepted the compensation, then the employer is free to drop the patent without offering it to the inventor.

 

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Can the employee transfer the patent to a competitor?

 

If the rights to the patent have been transferred to the employee, then the employee is free to sell or licence the patent to a competitor. However, the employee is not free to transfer trade secrets of his employer to the competitor and the general obligation of loyalty to his employer would prevent him in co-operating with the competitor to any great degree. The only way to prevent the transfer of a patent to a competitor is for the employer to continue to hold the rights to the patent and pay the annual renewal fees.

 

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Last Updated: 5 June 2001

Robert Harrison: rob.harrison@munich-ip.de