Introductory example
R is a young engineer who has developed a self-cooling drinking bottle in his spare time. Thanks to a special cooling gel in the double walls, the bottle keeps drinks pleasantly cool for many hours without electricity or ice cubes – perfect for sports and travel.
Since R cannot market the product himself, he transfers his rights to the invention to investor I. A written transfer agreement is concluded between the two parties, specifying the purchase price and other details. With this agreement, I acquires the right to apply for a patent for the invention and to exploit it commercially.
Der Erfinder ist immer der ursprüngliche und alleinige Berechtigte, eine Patentanmeldung für seine Erfindung einzureichen. Dieses Anmelderecht steht ihm persönlich zu, da er den geistigen Beitrag zur Erfindung geleistet hat. Gleichzeitig ist dieses Recht übertragbar: Der Erfinder kann es durch Vertrag an Dritte abtreten, sodass diese berechtigt sind, im eigenen Namen eine Anmeldung einzureichen. Auf diese Weise wird sichergestellt, dass der wahre Berechtigte die Kontrolle über das Anmelderecht behält, es aber bei Bedarf wirtschaftlich verwerten oder in Kooperationen einbringen kann.
In R's case, this means that, as the inventor, he alone is entitled to file a patent application for his newly developed invention. This right initially lies exclusively with him, and no one else may file a legitimate application without his consent. However, since R wants to work with investor I, he can transfer the right to apply to I. Only with this transfer is I entitled to file the application in his own name and later act as the applicant and possibly also as the patent holder. This preserves the legal sequence: the starting point is always R as the inventor, who must actively transfer the right to apply.
There is a lack of entitlement to file an application if the subsequent applicant and patent holder has learned of the invention by legal means but nevertheless does not have the right to file an application, either because he has lost the right to do so or because he has never received it.
If R himself submits the application to the patent office after the transfer to I, he is no longer the true owner but still the applicant. In this case, there is no discrepancy, and I can demand that R transfer the application to him.
If no contract is concluded between R and investor I because they cannot agree on the terms, I is still not allowed to legally apply for the patent—even though he is aware of the application. If he files the application anyway, there is a discrepancy: I would be entered in the register as the applicant, but R would remain the true beneficiary. In such a case, R could successfully have the patent revoked and even demand that it be transferred to himself. This is to prevent third parties from profiting unlawfully from the invention.
Lack of entitlement may also exist in part if several people have jointly made an invention. In this case, all co-inventors are also co-entitled, so that no one alone may dispose of the invention.
It turns out that S developed the invention together with R and is therefore a co-inventor. When I filed the application, he was only entitled to claim R's share, but not S's. This means that I is partially lacking entitlement. S can defend himself against the application and demand that his share as inventor be assigned to him. As a result, I would have to assign part of the application or patent to S, so that both are considered joint owners and applicants.
Under Austrian law, the claims described above are decided by the patent office. Under German law, this is done with the regional court.
For the request for vindication to be successful, the applicant must provide various pieces of evidence. First, they must prove that they themselves are entitled. An application for vindication cannot be filed by just anyone who merely has knowledge of a possible unauthorized application. The applicant must prove that they are actually entitled.
In this case, I carelessly talks to J about the invention. Shortly thereafter, J files a patent application. I can prove that he was in possession of the invention and that he told J about it.
A prerequisite for a vindication application to be successful is to show that the applicant was not entitled to file the application because it was the applicant's invention that led the applicant to file the application. This so-called causality requirement means that not only must the invention correspond in terms of content, but it must also be proven that the applicant's invention reached the patent holder and that the latter then filed the application.
For a successful vindication, however, I must also prove causality: he must show that it was precisely his disclosure of the invention that prompted J to file the application. If this proof is successful, the patent can be revoked from J and transferred to I. Indications of this would be, for example, drawings or text passages that have been taken over.
Unlawful appropriation
In the case of unlawful appropriation, the subsequent applicant gains unlawful access to the invention and registers it. Typical examples include industrial espionage or unauthorized entry onto the inventor's premises, as well as corporate espionage through hacking or the interception of telephone conversations.
R's premises are broken into and the perpetrator steals the design plans for R's newly developed device. The perpetrator then uses these documents to file a patent application in his own name. This is a classic case of unlawful appropriation: the perpetrator had no right to file the application, but gained access to the invention by unlawful means. R can therefore demand that the patent be revoked and prove in the proceedings that the application is based exclusively on the stolen plans.
R sends the documents relating to his invention by email to his patent attorney. A hacker manages to gain access to his mail server and intercept the confidential files. The hacker then applies for a patent for the invention in his own name.
This constitutes unlawful appropriation, as the applicant gained unauthorized access to confidential data. At the same time, it is an unauthorized application, as the hacker has no rights to the invention. R can therefore demand that the patent be revoked and, if necessary, also take criminal action for data theft.
Voluntary actions by the entitled party, whereby they voluntarily disclose the invention, do not constitute unlawful appropriation, but may constitute an unauthorized application. Especially when such actions take place in public, there may also be a novelty problem.
R tells a friend about his new invention during a bus ride. Without realizing it, he is overheard by V, who picks up on the technical details and later files a patent application in his own name. In this case, there is no unlawful appropriation by V, as R voluntarily disclosed the invention. However, it is very much an unauthorized application by V, as the third party is not an authorized party. In addition, the discussion of the invention may have taken away its novelty, because R made the invention itself accessible to the general public with his public statement.
The applicant must prove that the invention was unlawfully appropriated and that the application was filed by the person who appropriated the invention. Interestingly, it is irrelevant whether the applicant himself was entitled to do so or whether he obtained the invention through his own unlawful appropriation.
R originally made the invention and has already transferred it to I. The owner of the invention and thus the true entitled party is therefore actually I. Now an unlawful appropriation occurs: X gains access to the invention through industrial espionage and submits a patent application on his own authority.
According to the rules on vindication, it is irrelevant that R has already transferred the invention. In any case, R is more entitled than X and can take action against the unlawfully obtained patent. He therefore has the right to demand the vindication and transfer of the patent from X to himself.
However, since R has already transferred the invention to I, he must subsequently also surrender the patent to I. This is because I is the true owner.
Effect of vindication
Vindication has various legal effects. The successful applicant has the choice of whether they want the patent to be revoked – which is equivalent to a declaration of invalidity – or transferred to them. Often, the aim of a vindication application is to obtain the patent itself in order to enforce it against third parties.
Suppose that R's invention was unlawfully taken by Y, who then filed a patent application and even obtained a patent. R defends himself against this with a vindication application. If this is successful, R has two options: He can demand that the patent be transferred to himself so that he is entered in the register as the new patent holder and can enforce the property right against third parties. Alternatively, he can opt for pure vindication, which is equivalent to a declaration of invalidity. In this case, the patent is completely eliminated and no longer exists, so that neither Y nor anyone else can derive any rights from it.
In the case of an unauthorized application by one of several co-inventors, however, the applicant cannot demand transfer to himself alone, as this would also be unjustified. In this case, transfer to all co-inventors jointly can only be demanded.
Suppose R and S have jointly made an invention and are therefore co-inventors. Nevertheless, R registers the invention on his own and is entered in the register as the sole patent holder. S has thus been bypassed and can take legal action against R. However, S cannot demand the complete transfer of the patent to himself alone, as he too would not be solely entitled to it. Instead, he can only demand the transfer of a share of the patent, so that both co-inventors are jointly entered in the register as co-owners and exercise the rights to the patent jointly in the future.
The lack of entitlement leading to vindication can also be used as an objection in patent infringement proceedings. An unauthorized patent holder cannot assert any claims against the true owner. However, claims against third parties remain valid.
Y unlawfully took R's invention and then applied for a patent. When R begins to produce his own invention, Y sues him for patent infringement. In this case, R can raise the objection of lack of entitlement in the infringement proceedings and point out that Y only obtained the patent through unlawful appropriation. An unauthorized patent holder cannot assert any claims against the true owner. At the same time, R has the option of initiating vindication proceedings to have the patent formally transferred to him or to have it completely removed.
A third party cannot defend itself against an infringement allegation by claiming that the patent actually belongs to someone else, unless it is the true owner itself. Only in this case can it raise lack of entitlement as an effective objection in patent infringement proceedings.
R is registered as the patent owner and is suing L for patent infringement. L cannot defend himself in these proceedings by claiming that the invention actually belongs to the investor I. Such an objection would be irrelevant because only the true owner himself – in this case I – can assert the lack of entitlement. As an uninvolved third party, L cannot question the ownership, but must comply with the existing patent. Only if L itself were the true owner could it successfully raise the lack of entitlement as an objection in the infringement proceedings.
