No Right to Access to Profits for Employed Inventors - BGH "Türinnenverstärkung"

In the decision "Türinnenverstärkung" (X ZR137/07 of November 17, 2009), the Xth senate of the Federal Supreme Court BGH has overturned its establised case-law according to which the employed inventor has a claim to account for profits in order to determine his fair and adequate compensation.

The senate now judges that a right to access the annual turnover of the product concerned is sufficient to ensure the inventor's rights. The core argument is that modern inventors are engineers acquaintained with the internet and have possibilities to access informations similar to those of e.g. patent owners requesting damages to be calculated by licence analogy or owners. For the latter, no claim to access information had been granted in the past, the reason for the special role of employed inventors being that these were assumed to be humble workers with poor access to information such that complementary information was considered necessary for them to enable the assessment of the value of their invention.

Technical Contribution, not Economical Contribution Counts for Inventor's Remuneration

The German Federal Supreme Court (BGH) has published its 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.

Conspiracy Theory - BPatG 3 Ni 25/09

The German Federal Patent Court has partially nullified a patent in a procedure where the patentee had defended the patent in a limited form only and the plaintiff had limited his request to the part of the patent that was not defended anymore.

In such a case, the patent court has a simple job and maintains the patent to the extend to which its validity is undisputed and nullifies the rest - which is not defended anymore. It does so even without substantive examination. So far, this is a fairly boring case.

The interesting part comes now: one of the inventors has filed a third-party observation (labelled "amicus curiae brief" - which sounds somewhat overblown for us germans) arguing that the whole procedure was a hocus-pocus arranged to deprive him of his financial compensation as an employee-inventor. How this?

If a patentee abandons a patent, the german act on employee's invention obliges him to offer the patent to the inventor prior to the abandonment. This is, of course, generally not the case when the patent is nullified. I do not want to make any allegations to the patentee since I do not know any furhter details on the background. However, the very idea is compelling: engage a straw-man for nullifying the patent in order to circumvent the german law on employee's inventions?

The decision mentions that the evidence for abusive behavior is not sufficient and that the dispute between the inventor and his former employer is pending at the civil courts. The patent court has no jurisdiction on the question of the impact of the nullification on the financial compensation of the inventor.

We are looking forward to hear the sequel of this.