Inventions of university employees are basically treated in the same way as inventions of other employees. The university can acquire the rights to the invention from the employee by law. In return the high school is obligated to file a patent application and to pay an inventor’s bonus to the employee.
The amount of the inventor’s bonus for high school inventions is subject to special regulations. Pursuant to § 42 (4) of German law for employees’ inventions the inventor is entitled to 30% of the revenue which the high school obtains from exploiting the invention. In the frequent cases in which the University exploits the invention by granting licenses, the inventor receives part of the license fees.
Recently, the German Federal Court of Justice (BGH) decided that for determining the inventor’s bonus not only license fees have to be considered, but also other benefits the University acquires (decision of 05.02.2013 -X ZR 59/12 – “Genveränderung”). In that particular case the license holder of the University applied for a patent on his own costs. The BGH made the observation that in general the employer has to cover the costs of a patent application. Usually, these costs are not to be considered to the detriment of the inventor when determining the inventor’s bonus. The BGH furthermore asserted that there should be no difference between the case in which the employer covers the costs initially to be reimbursed by the license holder afterwards in comparison to the case in which the costs are directly covered by the license holder. The inventor has to be placed on the same footing in both cases. The expenditures of the license holder for obtaining and maintaining the patents have to be considered as financial advantages of the University when the inventors bonus is calculated.
If a patent is granted and maintained and a plurality of countries, considerable costs may occur. In that case the inventor’s bonus of the employee increases considerably.