In a recent decision(1) the Federal Supreme Court in Civil Matters ruled on the rights of an employee inventor whose notice of an invention did not disclose all elements of the invention that was later patented. The invention was completed with the help of contributions by another employee and this additional contribution was the reason for the invention's commercial success.

The court held that the employee who presented the basic invention was nevertheless entitled to compensation under the Act on Employee Inventions.

In its analysis, the court referred to established case law on the rights of co-inventors, holding that these claims depend on the share of the inventor's contribution to the invention and not on the economic value of the contribution. The contribution must be weighed in the context of the invention in its entirety.

The court held that this also applies to employee inventor claims. In this case, the claims were also based on the share of the employee's contribution to the invention and not on the contribution of the features that led to the invention's commercial success. Therefore, the court held that in the field of employee inventions, the rights of the employee inventor must be assessed in light of the employee's participation in the overall achievement. This assessment should be made not from an economic point of view, but rather from a technical point of view.

The legal situation regarding employee inventions can be problematic. In a worst-case scenario, the oversight of certain formalities can result in employee inventors (not the company) being entitled to the inventions made in the course of their employment and to the respective patents.

It is a principle of employee invention law that inventions are deemed not to be fully compensated under normal salary, but must be compensated separately.

The court's decision is correct from a technical point of view. As a general rule, a patented invention can be commercialised only using all features of the patented technology. Therefore, it is fair to link the compensation to the technical – not economic – contribution of the employee inventor.

However, employers should keep this decision in mind in order to mitigate the risk of overseeing an employee's rights to compensation. Furthermore, employers should claim the invention from employees who played a basic role in the invention process, but were not involved in its finalisation and commercialisation. Otherwise, an overlooked employee inventor may later lay claim to a share of the patent.

For further information on this topic please contact Philipp Ess or Nora Keßler at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email ([email protected] or [email protected]).


(1) November 22 2011, File X ZR 35/09 – Ramipril II.