In essence, the BGH confirmed the ruling of the Düsseldorf Regional and Düsseldorf Appeal court that the 4-month deadline during which an employer has to claim ownership vis-à-vis its employee with regard to any invention - is a conclusive deadline and, more important, that such 4-month deadline does not only start running with a notification by the employee but also if the employer has sufficient knowledge about the potential invention.
The BGH ruled that this normally is the case if the employer files for a patent. This means that in practice the 4-month deadline starts running at the date the patent application was filed. If the 4-month deadline expires and the employer has not claimed ownership, ownership rests with the employee. This conclusion is quite in contrast with the practice of the arbitration chamber who has competence on disputes relating to the calculation of the compensation. The arbitration chamber took the view that the 4-month deadline cannot start as long as the employee has not properly notified the invention to the employer with the detailed description. The practice could work with the arbitration chamber's rulings as employees quite often did not properly notify their invention so that the deadline did not start. This practice now has to change with the ruling of the Federal Supreme Court as the 4-month deadline regularly at the latest starts with the patent application.
The consequences for the practice in Germany are significant:
** Patent attorneys operating in Germany have to inform their clients about the beginning of the 4-month deadline (some may have advised according to the practice of the arbitration chamber).
** Companies operating in Germany, in particular mid-sized companies, have to take the obligations under the German Employees' Invention Act more seriously as they may risk losing ownership of inventions made by their employees.
** Companies have to adopt and implement internal rules and systems in order to comply with the German Employees' Invention Act.