Employee’s Inventions - Inventorship & Ownership Issues

Inventorship

Because an invention comes from a human being, an inventor cannot be a legal entity. When the invention is developed jointly by several people, they are co-inventors. Inventorship starts from the principle that each inventor has made an independent and creative contribution to the inventive teaching. Such contribution does not necessarily need to be inventive in its own. On the other hand, the simple provision of tools for the research activities, such as providing an employee with a laboratory, is not a sufficient contribution. It is also not a sufficient contribution if another individual simply follows the inventor’s instructions.

Ownership

The proprietary rights connected to the invention follows from the inventorship. Article 60(1) of the European Patent Convention (EPC) and Section 6 of the Patent Act state:

“The right to a…patent shall belong to the inventor or his successor in title.” The right to the invention comprises “the right to the patent, the right to the grant of a patent and the rights deriving from a patent.”

An inventor who assigns his right to the invention still remains the inventor; this is a personal right that is not transferable. The assignment does, however, trigger a transfer of the proprietary rights connected with the invention to the assignee, who can be a natural person or a legal entity. The assignment of a patent or patent application does not require a written form, and could even be based on an implied agreement.

A limited exception arises in the assignment of European patent applications. These assignments require a written and signed agreement, according to Article 72 EPC. For granted European patents the less restrictive German national provisions are applicable.

Co-Owners

Where the invention is developed jointly by several people, they are deemed co-owners of the invention. The legal relationship between co-owners may be governed by a joint agreement. In the absence of a written agreement, Section 741 of the German Civil Code, which deals with co-ownership, applies.

The co-owners each have a share in the invention that corresponds to their individual creative contribution. In cases where the creative contribution is in doubt, it is assumed that the co-owners are entitled to equal shares. Each co-owner is also entitled, without the consent of the other co-owners, to transfer his or her share in the invention to a third party.

Co-owners can use the invention for their own purposes as long as the joint use by other co-owners is not impaired. The administration of the invention is organised jointly by the co-owners. This includes the filing of patents or utility models and the granting of licenses. It is usually sufficient if the co-owners agree actions by a majority vote. In cases where there are only two co-owners, however, both co-owners must agree.