Germany: Munich District Court: Disclosure Of Employee Invention By E-Mail Not Sufficient In View Of Written Form Requirement (Decision Of May 16, 2013 – Case 7 O 6031/12 – Spülbare Mehrschichtfolie/Flushable Multilayer Film)

Last Updated: 11 August 2014
Article by Jörg Wahl and Diana Fichtner

Munich District Court: Disclosure Of Employee Invention By E-Mail Not Sufficient In View Of Written Form Requirement (Decision Of May 16, 2013 – Case 7 O 6031/12 – Spülbare Mehrschichtfolie/Flushable Multilayer Film)

First, the period of claiming an employee invention according to Section 6 (2) German Employee Invention Act in its version applicable until September 30, 2009, is not initiated by an invention disclosure via e-mail as this does not meet the requirement of a "written form" of the invention disclosure. Second, the period of claiming an employee invention (Section 6 [2] Employee Invention Act, version applicable until September 30, 2009) starts anew once the employee – after justified request of the employer made before the end of this period – hands over a written invention disclosure form.

Plaintiff – a former employee of Defendant – requested the transfer of several patents/patent applications of Defendant. In his capacity as employee of the Defendant, Plaintiff had (co-) invented the service inventions. He argued that Defendant had not successfully claimed these and thus the rights to the inventions had not been transferred to Defendant.

In accordance with the prior and commonly used practice in Defendant's company, Plaintiff had informed the Defendant about the inventions only by e-mail. Regarding one of the inventions (EF0001), Plaintiff inconsistently indicated differing combinations of co-inventors for the same invention in several independent e-mails.

After filing of respective patent applications, Defendant, nonetheless, requested Plaintiff to submit also written, i.e. signed disclosure forms for the inventions. Plaintiff subsequently provided these, thereby again naming different co-inventors and co-inventor shares regarding one of the inventions (EF0001).

Plaintiff argued that already the receipt of his e-mails had initiated the four-month period for claiming the inventions according to Section 6 (2) Employee Invention Act (applicable version until September 30, 2009) and consequently the later claiming by Defendant was belated and had no effect. According to his opinion, a written form as required by Section 5 (1) Employee Invention Act in its applicable version until September 30, 2009, was "nit-picking formalities" and against good faith in the present case since Defendant already had received all necessary information about the inventions by the prior emails. The employer had also expressed that he had such knowledge either by respective filings of patent applications or by response e-mails of employees of the Defendant to his e-mail invention disclosures.

The Munich District Court, however, in first instance fully rejected these arguments and found that Defendant had successfully claimed the service inventions of Plaintiff.

The Court emphasizes the great importance of the written form requirement of an invention disclosure to establish legal security and legal clarity according to the former version of the Employee Invention Act, which applied here. In view of the resulting rule-exception-principle, the Court confirms that only in exceptional circumstances a written invention disclosure form is dispensable. This might be the case according to prior case law of the German Federal Supreme Court if (i) the employer already has all necessary knowledge and insight about the invention and (ii) if the employer (clearly) objectively proclaims that he does not require a written invention disclosure form and therefore such written form would only be "nit-picking formalities". Such proclamation by the employer might be given if he files a patent application. According to the Munich District Court, the employer must (objectively) express with such act that he does not or will not insist on receiving a signed invention disclosure form.

However, such request for a written invention disclosure form is typically justified if an invention disclosure, which has not been made separately and in written form, might fall into oblivion, otherwise. This in particular applies if different invention disclosure forms exist and/ or if differences occur between a filed patent application and a subsequently submitted invention disclosure form.

In the case at hand, there is no "nit picking" if the employer within four months after filing such patent application still requests the employee to submit a signed invention disclosure form, e.g. due to contradicting invention disclosures. In such cases, the period of claiming according to Section 6 (2) Employee Invention Act (former version) would start anew from the date of receipt of the proper invention disclosure form.

Remarks

In addition to the existing case law in this respect (Federal Supreme Court, GRUR 2006, 754 – Haftetikett/ Adhesive Label; Federal Supreme Court, GRUR 2011, 733 – Initialidee/Initial Idea), here, the Munich District Court amends the principals of the "Adhesive Label" case law. If the present decision is upheld in further instances (an appeal is pending before the Munich Appeal Court, Docket No 6 U 2465/13), it significantly shifts the deadline for claiming service invention in favor of the employer. Therefore, in cases of lacking proper invention disclosure forms and nonetheless filed patent applications for service inventions disclosed prior to October 1, 2009, it should be carefully checked whether the above outlined principles apply.

For the sake of good order, under the new Employee Invention Act applicable on service inventions disclosed on or after October 1, 2009, the invention disclosure form does not need to be signed anymore; rather, e.g. an e-mail suffices. Further, under the new law, contrary to the situation under the old law, the employer is deemed to have claimed the disclosed service invention within four months without further ado. Thus, the principles of the above discussed decision should not be applicable on set of facts coming under the new Employee Invention Act.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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