Service inventions in Austria
What happens under Austrian law, when an employee invents something? Does the invention belong to the employer or the employee? Does the employee get anything in return? These questions are answered by the Austrian Patent Act – at least by and large.
In Austria, the rights to inventions are not automatically transferred to the employer. In order for the employer to be entitled to the invention, in general
it has to be a service invention,
there must be a written agreement, and
the employer must claim the service invention in time.
Who qualifies as an employee?
Employees within the meaning of the Austrian Patent Act are in particular white collar and blue collar workers (Angestellte & Arbeiter). In the case of other employment relationships, it must always be checked whether (nevertheless) employee status exists.
Members of the board of directors and, under certain conditions, also managing directors are not considered employees within the meaning of the rules on service inventions.
Service invention
A service invention is a patentable invention of an employee if its subject matter falls within the company's field of activity.
In addition, however, it is also necessary that
either the activity that led to the invention is part of the employee's duties, or
the employee has received the inspiration for invention through his or her work in the company, or
the invention has been significantly facilitated by the use of the company's experience or aids.
Written agreement
Agreements according to which future employee inventions of the employee are to belong to the employer are only valid if they are made in writing. As a rule, this is done in the employment contract. However, it is also sufficient if the applicable collective bargaining agreement provides for a corresponding provision. This is the case with many white collar workers collective bargaining agreements. In case of doubt, however, it is advisable to have the agreement in the employment contract.
Special rules apply to public employers, universities and IST Austria.
Claiming the invention
However, the written agreement alone is not sufficient for the service invention to belong to the employer. In principle, the employee is obliged to report any invention to the employer without delay. The employer must declare within a certain period of time whether it claims the invention as a service invention. The statutory deadline is four months, but many collective bargaining agreements provide for a reduction to three months. If the employer declares not to claim the invention or does not make a declaration at all, the invention belongs to the employee. This is an important difference to the legal situation in Germany!
Additional remuneration
If the employer claims an invention, the employee is entitled to appropriate special remuneration. Special rules apply to so-called "employed inventors".
While in Germany there are "Guidelines for the Remuneration of Service Inventions in the Private Sector" that contain concrete calculation methods, the Austrian Patent Act only provides for very general criteria. For example, the economic significance of the invention for the company, any exploitation of the invention that would otherwise take place, and the share that the employer had in the creation of the invention in each case must be taken into account.
These relatively vague regulations and the fact that there is little published case law repeatedly lead to disputes about the appropriate amount, especially when the employment relationship is terminated. It should also be noted that the additional remuneration can be changed retrospectively under certain circumstances. In practice, this usually becomes decisive when it turns out that the invention has an extraordinary economic significance for the company, which is not compensated for in the additional remuneration already paid.
Other provisions
The Patent Act also contains provisions on
the statute of limitations,
the duty of secrecy of employees and employers,
how to proceed if it later turns out that another employee made the invention, and
what happens if the employer subsequently waives the rights to the claimed invention.
It is also important to note that
the rights of the employer and the employee related to a service invention also apply after the employment relationship ended; and
that the rights of the employee in connection with service inventions (at least during an ongoing employment relationship) cannot be waived or restricted.
If you as an employer or employee need support in connection with service inventions in Austria, Adi Zemann as attorney specialized in patent law will be happy to assist you.
