The BGH has issued a decision on "Arbeitnehmererfinderrecht" (Feb. 14, 2017, X ZR 64/15: Mitteilungen der Patentanwälte, Heft 4, 2017, pages 182 to 186) named "Lichtschutzfolie" which works under the old (prior to Oct. 1, 2009) law and also acknowledged and confirms that where an inventor filed an email with his employer (thus lacking the required written form with own original signature), but including the information on the invention, how it was conceived, what the problem to be solved was and the subject matter of the invention, and where the employer then files a patent application naming the inventor, this (the filing date of the application, not the email which was not considered as reliable as a correct invention disclosure in writing with signature) can also be seen as a disclosure as required under old law for stating the 4 month deadline of § 6 (2) sentence 2 of the ArbnErfG for claiming the invention.

 

A subsequently filed invention disclosure fulfilling all formal requirements (in writing, signature) was thus not regarded as re-starting the 4 month period.

 

The BGH revision of the judgement of the OLG led to revocation of the latter´s judgement (which denied the transfer of the patents at issue to the inventor, considering only the later formally correct invention disclosure as starting the 4 month period) and remission to the OLG.

 

The BGH emphasized that the filing of a patent application in principle has the same effect as a correct (old style) invention disclosure.

 

No specific indications existed that the inventor, when filing the later old style invention disclosure, wanted to re—start the 4 month period (which would have led to the consequence that he could not have asserted rights on the patent for himself and thus required specific reasons).

 

The case was more complicated as also a second application on an improvement of the first invention was included in the foreign filing of the first patent. However, this was considered as not starting the period anew for the first invention for which the deadline was already expired and thus the invention was free for the inventor, and the rights could then not be taken away later by the subsequent filing by the employer of a patent application including the second invention.

 

However, the proceedings were regarded as not mature for decision. More legal facts were required and the was case therefore remitted to the OLG, based on the fact that two inventions were involved and only for the first one the 4 months had expired, so that a right to a complete transfer of the patent application containing both inventions was still to be determined. Further facts were not regarded as having been determined sufficiently.