No implicit invention disclosure in a Power-point presentation

In another dispute, the Arbitration Board of the German Patent and Trade Mark Office (DPMA) had to deal with claims of an employee based on an alleged service invention.

In this case, the employee had orally presented his development to employees and superiors in the company within the scope of a project, and by using PowerPoint slides. However, the inventor had not made it clear to his employer that he believed he had made a service invention in the process.

The Arbitration Board made it clear that the requirements of Sec. 5 (1) Employee Inventions Act (ArbEG) are to be strictly applied. The Board determined that in this case there was no valid invention disclosure which could be used by the employer as a normal work result. The use of the invention was compensated by the employee’s salary.

It should be born in mind that late notification as a service invention by the employee is usually ineffective. This is particularly the case if the employer already delivers relevant products to customers without any obligation of secrecy, and thus starts using the invention. The obvious prior use by the delivery to the customers naturally makes the prospects of a patent application being granted null and void from the outset, so that for this reason, too, no claims for compensation would be enforceable.

Arbitration Board of the GPTO, Case number: 50/16

June 18, 2020
Thorsten Brüntjen
Patent Attorney