SE – Guidance on employer’s right to an invention by former employees

Posted: November 12th, 2013

ContextVision AB v. SAPHENEIA Commercial products AB, District Court of Stockholm, Sweden, 12 July 2013, Docket No. T 17713-08

ContextVision brought action against Sapheneia, requesting the District Court to determine ContextVision’s right to the invention in Sapheneia’s international PCT patent application, as submitted to the EPO. At the time of the court action, the patent application had been refused by the EPO due to lack of inventive step and had also lapsed due to non-payment of the maintenance fees by Sapheneia.

The two inventors, indicated in Sapheneia’s patent application, were both former employees of ContextVision, who after they resigned immediately began to work for Sapheneia. The District Court ultimately ruled that ContextVision had better right to the invention.
Initially, the District Court found the Swedish Act on the Right in Inventions by Employees to be applicable as the patent application designated a, in Sweden, patentable invention (the Act does not apply to other inventions) – despite the patent application having been refused by the EPO and it having been published after its lapse.

This conclusion was reached by the District Court after a hypothetical examination of the invention’s patentability, based on a presumption for patentability and the conditions prevailing at the time of filing. The District Court also referred, inter alia, to EPO’s Enlarged Board of Appeal’s case G 3/92 and held, in accordance with Art. 61.1 (b) of the EPC, that if by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the European patent, that person may file a new European patent application in respect of the same invention.


Therefore the invention still fulfilled the requirement of novelty. The District Court also noted that the relevant time for the assessment of patentability in any event should be the earliest possible, in order to prevent an illegitimate applicant circumventing the Act by publishing the invention.
Furthermore, the District Court concluded that the invention is within the activity that ContextVision conducted at the time before the employees resigned and also holds a strong and significant connection with such research and invention activities that constituted the employees’ main tasks at ContextVision.

The circumstances in the case also indicated that the invention was made meanwhile the employees were employed at ContextVision. In any case, Sapheneia had not made it probable that the invention was created after the employees’ respective employment ceased. Since the former employees did not notify ContextVision of the invention as required under the Act, the District Court found that ContextVision had not lost its right to acquire the invention when it gave notice to the employees on its intention to acquire the invention (despite there being a set period of only four months’ from knowledge of the invention to give such notice under the Act).

Read the judgment (in Swedish) here.

Head note: Erik Ficks

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