Many industrial companies collaborate with specialized engineering companies when they want to improve their products with the help of new technologies. They then want to be able to patent the results of these development projects. The prerequisite for this is that they contractually secure the necessary rights. It is important to bear in mind that co-inventorship of the engineering company is already possible if its preliminary project work forms the starting point of the subsequent invention.

An engineering company had proposed to an automotive supplier the use of the zinc thermal diffusion process for the surface corrosion protection of components made of high-strength steel. It presented the results of stress tests on a special steel treated accordingly. The parties then concluded a confidentiality agreement and launched a development project.

In the course of the project, the automotive supplier applied for a patent for a hot-formed and press-hardened structural component made of high-strength steel with a corrosion protection layer of zinc less than 10 microns thick, contrary to the confidentiality agreement. The engineering company objected to the Patent Application as being in breach of contract, whereupon the automotive supplier withdrew the Application and transferred the right to these patent claims to the engineering company. The latter in turn filed a patent application for the invention.

The automotive supplier then applied for a new patent for the use of such a steel as an automotive structural component. The core of the claim was the heat treatment between 320°C and 400°C in order to slightly increase the ductility.

The engineering company also considered this Application (patent in suit) to be unlawful and sued for assignment and damages.

The Regional Court ruled in favor of the plaintiff, while the Higher Regional Court dismissed the Lawsuit. The latter found that the patent in dispute dealt with the wrinkling of structural components in a crash. In contrast, the engineering company’s invention concerned a corrosion coating. It should also be noted that the claim of the disputed patent of use prescribes a temperature of 320°C to 400°C to improve the material properties, whereas the patent specification of the engineering company recommends a heat treatment temperature of less than 320°C in order not to change the material properties. As a result, the engineering company had made no contribution to the subject matter of the patent in suit and could therefore not claim co-inventorship.

The plaintiff successfully challenged this judgment before the Federal Court of Justice (BGH). The BGH justified its judgment as follows.

Co-inventorship does not depend on the differences, but on the similarities of the disclosure. It is not sufficient to examine whether it can be inferred from the Lawsuit’s documents that he was in possession of the teaching formulated in the claim of the patent in suit. Rather, it must be examined first and foremost to what extent the teaching disclosed by the Lawsuit and that of the patent in suit correspond. Only the overall view of the correspondences allows an assessment of whether there is an unlawful taking. Co-inventorship can be claimed by anyone who has made an inventive contribution, a creative contribution or a qualified contribution to the subject matter of the Application. It is not necessary for the entitled person to have made a complete invention that may be protectable on its own.

The lower court disregarded the fact that the engineering company recognized the teaching according to the invention. It had heat-treated (and simultaneously coated) hot-formed and press-hardened components made of high-strength steel in the patent-compliant low-temperature range, and it recognized that the components were suitable and intended to be used as structural components for motor vehicles. Whether the Lawsuit also recognized that the components were ductile enough, however, due to their somewhat lower tensile strength, to wrinkle rather than break or crack under appropriate loading is not necessary.

The patent in suit also covers those structural components which are the subject matter of the engineering company’s Application. It is irrelevant that the claims of the patent in suit are use claims and not product claims. The use claim could just as well have been formulated as a product claim.

The difference in the specified temperature ranges is not relevant. The steel still has the high-strength properties after heat treatment and is only slightly reduced in tensile strength in the interest of improved ductility. There is therefore no contradiction to the teaching of the patent in suit.

According to the patent in dispute, components that have an anti-corrosion coating can also be subjected to a heat treatment of 320-400 °C. This is an indication that there is no strict demarcation. Consequently, there are overlaps in the temperature ranges for good coatings and increased ductility. The Lawsuit had recognized an advantageous temperature range of 280-370°C, especially 300-320°C. Moreover, the Lawsuit had already documented tensile strength values for a heat-treated BTR steel, as later cited in the patent in suit.

Accordingly, the engineering company recognized essential parts of the invention and communicated them to the defendants. However, the lower court has not yet clarified whether the Lawsuit also communicated the knowledge gained from the crash tests. The judgment is therefore set aside and referred back to the lower court for further clarification.

Our comment: With this judgment, the BGH has once again clarified that co-inventorship does not require an “inventive contribution” to the state of the art. In practice, a collaboration will therefore usually lead to co-inventorship. Accordingly, it is important to clearly regulate the rights to the patent in advance in the event of a collaboration.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py