The Austrian rules on remuneration for invention made by employees are in several aspects quite different to those in Germany. Two of them are highlighted here.
In Austria, the employer is free to decide whether he applies for patent or utility model protection for inventions made by his employees and where he wants such a protection without the employee having the right to obtain protection in the countries not selected. Likewise, he is free to lateron withdraw such applications or granted rights or let them lapse without any obligation to the employee. All that is irrespective of his obligation to pay adequate remuneration for his use of the invention.
In a recent decision, the Austrian Supreme Court (OGH, 4.8.2009, 9 ObA 39/o8p) ruled on the type of monetary reward payable to the employee. According to Austrian Patent Law, the employer can always enter into an agreement with his employee to pay as remuneration a lump sum. However, that lump sum must be calculated on the basis of the value of the invention for the employer for the whole foreseen (future) use period at the time of the agreement or, in other words, on the basis of the foreseeable whole turnover. If lateron it turns out that the basis for the calculation of the lump sum has essentially changed, Patent Law gives the employee a right to demand an additional payment, which right can be exercised only once per year but each time such an essential change with regard to the previous calculation can be proven.
Such rights of the employee are secured in two ways: Firstly, any amount received or due has not to be paid back even if it turns out that the original or consecutive estimates were too optimistic. Secondly, any part of the agreement to the effect to hinder the employee to use his right and request an additional payment is null and void.
That decision also rules on a further aspect. As long as the employer uses the invention, the remuneration has to be paid, even when it turns out that there exist patent?free alternatives. However, such alternatives will lower the value of the invention and thus the remuneration due. In fact, only the advantages of the employer in using the invention in comparison of using the alternatives will be the basis for the remuneration. These would be mostly lower inhouse costs.
Dipl.-Ing. Helmut Sonn