OGH: On the reference value of a job-related invention
In the present case, the Austrian Supreme Court (Oberster Gerichtshof, OGH) examined the remuneration for a job-related invention to be discussed in the course of a step-by-step action.
The plaintiff was an employee of the defendant or its legal predecessors for a considerable period of time and was involved in a job-related invention of production machinery for plastic mouldings. The invention was in essence a thrust control and was sold by the defendant as an additional option.
The plaintiff filed a step-by-step action pursuant to Article XLII paragraph 1 of the Introductory Act to the Code of Civil Procedure (Zivilprozessordnungs-Einführungsgesetz, EGZPO) for the rendering of accounts by way of a declaratory judgement and the job-related invention remuneration as a payment. The defendant applied for dismissal. In its partial judgment, the court of first instance granted the request for the rending of accounts for the outgoing and incoming invoices relating to the additional option, but dismissed the additional request for attribution to the job-related invention. The Court of Appeal upheld the plaintiff's appeal and noted that although the relevant turnover is usually the subject matter of the protected inventive concept, an overall analogy must be assumed here if the subject matter of the invention had a decisive technical, economic or functional impact on the overall system.
The OGH decided as follows:
Pursuant to Section 8 Patent Act (Patentgesetz, PatG), the employee is entitled to an appropriate remuneration in the case of the transfer of an invention to the employer. Pursuant to Sec. 9 PatG, this assessment is determined on the basis of the economic importance of the invention for the company, the implemenation of the invention abroad or domestically and the share of suggestions, experience and tools provided by the employer. In this case, the assessment is determined according to the licence analogy, whereby the invention value is determined according to the consideration that an independent inventor would receive for his invention. The OGH rejected the plaintiff's claim that it was not possible to measure the claim without taking into account the tools produced and sold. The economic consideration of the customers could not be included in the basis for the measurement.
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