We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
25 November 2020
The Maritime and Commercial Court recently found that an engineer had not duly informed his employer of an invention and had therefore failed to discharge his duty to provide information under the Act on Employee Inventions.
If an employee makes an invention as part of an employment relationship and if the exploitation of the invention falls within their employer's field of work, the employee must inform their employer. In this case, the Maritime and Commercial Court had to decide whether an employee had discharged this duty.
The case concerned an engineer employed at a company which develops and manufactures hearing aids. During his employment, the engineer made an invention in the form of a specific algorithm. The engineer made a technical report describing the invention and gave a presentation in which the invention was superficially described.
Approximately one year later, the engineer resigned. He set up a business and applied to patent the algorithm. His former employer also filed a patent application approximately four years later after having been informed of the invention by a co-inventor.
The employer commenced legal proceedings against the engineer claiming, among other things, that the engineer had not duly informed it of the invention. The engineer referred to the fact that, among other things:
The court stated that it is for the employee to prove that due notification of an invention has taken place and that such notification must include not only technical and commercial information but also information on the issue of the rights to the invention.
The court found that neither the content nor purpose of the report or presentation was to provide notification of the invention and that none of these measures were suitable to clarify for the employer that it was an invention that the employer could claim.
In addition, the court emphasised that the engineer could easily have discharged his duty, for instance by using the employer's IT system for reporting inventions, which the engineer had used twice before. Finally, the court ruled that the co-inventor's notification could not be regarded as fulfilment of the engineer's duty to inform the employer.
In light of this, the court concluded that the engineer had not satisfied the burden of proof that he had duly informed the employer and, for this reason, the invention was owned by the employer.
The judgment illustrates, as a clear starting point, that inventions made during an employment relationship are owned by the employer and that the onus of proving that the duty to inform the employer of the invention has been discharged rests with the employee.
The judgment also highlights that the information an employee provides to their employer should clearly specify that it constitutes notification under the Act on Employee Inventions, which requires a decision on the question of the rights to the invention.
For further information on this topic please contact Rikke Falk Dambo at Norrbom Vinding by telephone (+43 35 25 3940) or email (email@example.com). The Norrbom Vinding website can be accessed at norrbomvinding.com.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.