decision (Ramipril II - X ZR 35/09) in a dispute on Inventor's remuneration.
In the case at issue, neither the original invention report nor claim 1 as filed or as granted relating to a substance made mention of a particular ingredient with the name Ramipril. Nontheless, the feature that the substance contains Ramipril has somehow made its way to a dependent claim 8. However, this dependent claim 8 turned out to cover the economically most important embodiment of the invention.
Both the employer and the Upper District Court considered the fact that the element which turned out to have the highest economical importance as being relevant for the calculation of inventor's remuneration.
Actually, the guidelines for calculating the inventor's remuneration as well as the established case-law require calculating the value of the invention as well as the "share factor" (Anteilsfaktor) the inventor has contributed as compared to the contribution of the employer and of his co-inventors.
The BGH has now found that this "share factor" is to be calculated based on the technical contribution the employee-inventor has made in view of the prior art. The economical importance of this contribution as compared to other contributions of the invention is of secondaryrelevant only to the extend where the economical success is considerded as an indicator for the role of the feature in the development process of the claimed subject-matter. However, according to the judgement of the BGH, the generally no causal link between the economical exploitation of the invention and individial features of a claim because using the the patented invention necessarily means at least all of the features of the independent claim are used in combination.