To date, it has been disputed in the literature whether a statutory limitation period of only three years or of 30 years applies to claims for the assignment of a patent application filed by an applicant not entitled to the invention. Munich Regional Court (Landgericht München I) is the first German court to determine a limitation period of only three years, which could have a significant impact on the strategic approach to alleged co-inventors.
If a patent application is filed by an applicant not entitled to the invention, the correct owner (usually the inventor or co-inventor) has a valid claim for assignment of the application or the granted patents (claim for patent ownership).
The statutory limitation period applicable to claims for patent ownership has rarely been a decisive factor in legal practice, since both Section 8 German Patent Act, governing ownership claims to national patents, as well as the corresponding provisions governing ownership claims to European patents, provide for a specific limitation period of only two years from the date of the publication of the grant of protection for the respective patent. Upon expiration of this two-year period, claims for ownership to the patent can only be asserted if the correct owner can prove that the applicant, who was not entitled to the invention, was acting in bad faith at the time of the grant of protection.
It has been disputed in literature whether the claims for patent ownership are further subject to a 30-year limitation period applicable for ownership claims in property law or the regular three-year statutory limitation period, regardless of the date of the grant of the patent. By the decision of the Munich Regional Court (Landgericht München I) of November 21, 2018 (21 O 11279/17) a German court has for the first time taken a position on this question.
In its decision, the Munich Regional Court examines at length the arguments in favour of the applicability of the 30-year statutory limitation period and comes to the conclusion that only the regular three-year limitation period applies. Although the court’s arguments are well-founded, it remains to be seen how other courts, especially higher courts, position themselves in this matter.
The decision of the Munich Regional Court is of considerable strategic relevance for legal practice. Based on the judgment, grossly negligent lack of knowledge of the circumstances giving rise to an ownership claim is sufficient for the limitation period to commence. However, the court did not explicitly state whether grossly negligent lack of knowledge on the part of the entitled party can always be assumed from the time of publication of the patent application. Had it been the case, a patent vindication claim raised later than three years after the date of publication of a patent application could in theory be objected to by raising the statutory limitation argument. In any case, as soon as the entitled party learns about the patent application one way or another, the courts could likely assume that the limitation period has commenced.
Following the decision of the Regional Court Munich it is therefore recommendable for inventors to put a stronger focus to potential patent applications by non-entitled parties and, if necessary, to consider taking immediate legal steps. Respectively, it is advisable for applicants to consider informing any potential (co-)inventors of a successful application in due time, even if their role as (co-)inventors is not recognized, in order to unequivocally initiate the three-year statutory limitation period.