Many companies are increasingly discovering the “successful together”-formula for success. For others, it is simply a necessity to engage with a partner that can conduct certain elements of production. The focus is not primarily on joint development, but on the joint production or assembly of a product, even if it is still being developed by one of the partners. If this partnership ends as planned or abruptly and one of the two former partners applies for a patent for an invention, the question regularly arises as to who owns the invention. If no contractual agreement has been reached on this in advance, or if the parties cannot come to an agreement afterwards, the only way left is to go to court by filing a patent entitlement action.
The greatest abuse of the trust between partners is probably filing a patent application for an invention even though the applicant is not the real inventor. The legal qualification of this situation is comparatively simple if it is a claim for full entitlement, i.e. for surrender of the granted patent or the applied-for invention. The success of such a claim presupposes that the actual inventor and plaintiff succeed in proving that the granted patent or the applied-for invention is of the same essence as the technical teaching contained in his products (e.g. prototypes) or otherwise in his possession and that he alone is entitled to it.
A more difficult situation is one in which it is not a matter of full entitlement, but at most about the granting of a co-entitlement. Here, too, it may be a question of the dishonest former business partner who, knowing about the co-inventorship of the other, applies for the patent – alone – in his own name. More interesting, however, in the opinion of the author, are the constellations in which the cooperation partner realizes that the cooperation with his partner is going in a different – from his point of view completely wrong – direction and instead takes a different (his) path. He then wants to have the resulting invention protected (by himself). In such a constellation, does he have to fear claims by his former partner who claims that he has made a so-called “creative contribution” which entitles him to co-inventorship? When is a contribution “creative” at all and what is the basis for this? Does the knowledge of this contribution have to be explicitly conveyed, or is it also sufficient that the former partner has provided a prototype and from this, if applicable and for the expert, this very creative contribution has resulted? And why is all this problematic at all? Is not co-inventorship also a competitive advantage?
These problems became tangible in the legal dispute recently decided by the Munich Higher Regional Court and the Federal Court of Justice (BGH) between two medical device manufacturers who, a few years after filing the application in dispute with the European Patent Office, found themselves in rather convoluted and protracted proceedings in Munich and Karlsruhe and in the US (there in the context of an action for abuse of trade secrets). The entitlement proceedings in Germany vividly illustrate the previously indicated difficulties faced by the parties and the courts. Our Partner, Dr. Peter Koch, gives advice on how to deal practically with such inventions resulting from a cooperative relationship.
The report, submitted by Dr. Peter Koch was published in “Medizinprodukte und Recht” (Medical Devices and Law), Issue 6/2021, page 214 et seq. and can be accessed here (login required)