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BGH decision on the ineffectiveness of an inventor remuneration agreement pursuant to § 23 (1) ArbEG
In its ruling of November 12, 2024 (case no. X ZR 37/22), the Federal Court of Justice (BGH) specified the requirements for the ineffectiveness of an inventor remuneration agreement pursuant to § 23 (1) of the German Employee Invention Act (ArbEG).
Background to the case
The plaintiff, a former employee in the research and development sector, demanded the continuation of the calculation of his inventor's remuneration based on an earlier determination by the employer. This included a percentage share of the invention-related turnover without considering a proportional factor. However, after the termination of the employment relationship in October 2017, the calculation was made with a share factor of 0.15 and respective license rates of 6% and 3%.
Decision of the BGH
The BGH found that both employees and employers can invoke the invalidity of an agreement or determination pursuant to § 23 (1) ArbEG. This follows from the wording of the law, which does not include any differentiation with regard to the affected party, and from the legislator's intentions, who demands a balanced appeal option for both sides.
“According to the jurisdiction of the senate, a remuneration agreement pursuant to § 23 (1) ArbNErfG is invalid if it falls significantly short of the statutory claim to reasonable remuneration. For this purpose, there must be an objectively significant disproportion between the remuneration determined in the agreement and the remuneration owed by law (BGH, judgment of October 4, 1988 - X ZR 71/86, GRUR 1990, 271, 272 - Vinylchlorid; BGH, judgment of March 6, 2012 - X ZR 104/09, GRUR 2012, 605 marginal no. 27 - Antimykotischer Nagellack)”.
Such a disproportion exists if the agreed remuneration deviates from the reasonable remuneration by more than 100 %. However, an objective disproportion cannot be determined solely on the basis of an excess of more than 100 % over the reasonable remuneration. The decisive factor is whether at the time the remuneration was determined, a sales trend was already foreseeable that would exceed the legally owed remuneration significantly in the long term. In addition, in the event of an overrun of more than 100 %, all relevant circumstances must be considered, such as the implementation of the regulation over several years without unreasonable burdens for the employer. These circumstances may mean that even a significant excess cannot be considered unreasonable according tof § 23 (1) ArbEG.
In the present case, the employer's original remuneration determination, which included a revenue share without a proportional factor, was implemented for several years. The BGH emphasized that a unilateral change to this determination by the employer is only possible under certain conditions. In particular, it must be examined whether the original determination was unfair according to§ 23 (1) ArbEG.
Implications for practice
The judgment underlines the importance of a careful and balanced determination of the inventor's remuneration. Employers should ensure that remuneration agreements do not deviate significantly from the remuneration owed by law in order to avoid their ineffectiveness. It also clarifies that both parties have the option of invoking the inequity of such an agreement. We will be happy to assist you in drafting a remuneration agreement.
Official guidelines of the BGH
- The employer may also invoke the ineffectiveness of an agreement pursuant to § 23 (1) ArbNErfG.
- For legal reasons, it is not objectionable that an objective disproportion is generally affirmed in accordance with the decision-making practice of the arbitration board if the proposed remuneration exceeds the amount calculated twofold based on the guidelines, taking into account all relevant factors.
- If the amount determined to be appropriate in this way is exceeded, the circumstances under which the determination was made and the period of time during which the regulation was practiced must not be disregarded.