Skrevet af

If an employee makes an invention as part of the employment relationship, and if the exploitation of the invention falls within the employer’s field of work, the employee must inform the 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 developing and manufacturing 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 also gave a presentation in which the invention was superficially described.

Approximately one year later, the engineer resigned. He then set up a business and applied to patent the algorithm. The 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, inter alia, that the engineer had not duly informed the employer of the invention. The engineer referred to the fact, among other things, that no special formal requirements are laid down in the Act on Employee Inventions as to how notification of the employer can take place, and that the employer had received the information necessary to assess the invention.

Not good enough
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 not only include 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 was 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 proving that he had duly informed the employer and, for this reason, the invention was owned by the employer.

Norrbom Vinding notes

• that the judgment illustrates, as a clear starting point, that inventions made during the 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; and
• that the employee’s information to the 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.

The content of the above is not, and should not be a substitute for legal advice.