Burden of Proof in the Context of Double Invention – Clarification by Case Law
The correct allocation of inventorship and the associated rights represents an especially demanding challenge in industrial property protection. This is particularly true when several individuals or companies develop an identical technical teaching almost simultaneously—a scenario known as double invention. Such situations are regularly examined in court from the perspective of the distribution of the burden of proof. The Regional Court of Mannheim has made a significant decision that further defines the requirements for presenting and proving claims in cases of double invention (Case No. 2 O 149/18).
Initial Situation: Competing Inventor Claims
A frequent point of contention is to whom, in the event of parallel developments of a protective right—such as a patent or utility model—the exclusive right of exploitation belongs. Particularly when inventions are filed within a comparable time frame, courts are tasked with evaluating competing rights and answering the question of which claim to the protective right and, where applicable, its economic use should take precedence.
Typical Problem Areas
In the context of double invention, various problem areas arise, including:
- Identity of the Invention: It must be assessed in each case whether the alleged inventions are genuinely identical at their core or only display similarities.
- Chronological Sequence: The key question is who made the invention at what time, and whether this circumstance was documented.
- Acts of Transfer: In business practice, statutory provisions concerning employee inventors and various contractual arrangements often play a role, which can further complicate a clear allocation.
Principles of Burden of Proof in Case Law
In civil procedure law, it is generally the case that the party relying on a favorable circumstance bears the burden of presentation and, if necessary, proof. In the context of double invention, this means that anyone asserting claims for injunctive relief, damages, or surrender must substantiate their authorship and priority date.
Reasoning of the Mannheim Regional Court
The Regional Court of Mannheim pointed out that in cases of conflicting statements by plaintiffs, it cannot be automatically presumed that one party’s priority right prevails over the other’s. Rather, a careful examination of all submitted evidence is required. Relevant aspects include documentation of research results, development logs, and credible demonstration of the original idea.
It is essential in this context that anyone relying on an earlier invention must set out in concrete and detailed terms how the innovation process took place. Deficiencies in documentation or gaps in evidence work against the claimant. Merely claiming to have made the invention first in time is not sufficient.
Practical Relevance and Contractual Structuring Options
The decision underscores the importance of structured and timely documentation, both in research and development and in the transfer of intellectual property rights, such as in company acquisitions or R&D collaborations. Applications for intellectual property rights should be filed with the utmost care and with reference to possible parallel developments. Both individuals and companies can minimize the risk of uncertainties in advance through contractual arrangements—such as invention disclosures or confidentiality agreements.
Implications for Existing and Future Proceedings
The clarification of the burden of proof by the Regional Court of Mannheim can have significant effects on pending and future disputes relating to double inventions. It can be expected that courts will continue to pay particular attention to the obligations of documentation and presentation. Furthermore, the circumstances of creation and acts of disclosure play a central role.
Summary: Significance for Companies and Investors
The decision makes it clear that in the case of competing inventor claims, comprehensive documentation and structured presentation of evidence are indispensable. Companies and investors operating in the field of technology development are well advised to ensure, from an early stage, precise traceability of all development phases and intellectual property applications.
For unresolved questions regarding potential double inventions, effective protection of intellectual property rights, or the defense against unwarranted claims, in-depth analyses and tailored solutions may be required. The lawyers of MTR Legal comprehensively support clients in the field of industrial property protection and are available for further consultations.
Source: Regional Court of Mannheim, Judgment of 21.08.2020, Case No.: 2 O 149/18
