참고자료로 인터넷에서 찾아본 내용을 간략하게 정리해 올립니다.

 

1.    당사자 계약 우선

 

사용자와 직무발명자는 계약으로 보상내용을 약정할 수 있습니다. 다만, 사전 계약은 효력이 없고 해당 직무발명을 사용자에게 승계한 후에 체결한 계약만이 유효합니다. 또한 종업원 직무발명자는 사용자와 근로계약이 종료된 날(즉 퇴직한 날)로부터 6월 이내에 위 직무발명보상에 관한 계약내용이 불공정하다고 다툴 수 있습니다. 계약상 약자인 종업원의 권리를 보호하는 법적 장치입니다.

 

한편, 직무발명의 가치평가에 관한 실질적 변화가 있는 경우에는 양 당사자는 그와 같은 사정변경을 보상에 관하여도 주장할 수 있습니다.

 

2.    직무발명 보상액 산정방법에 관한 독일법령  

 

독일법(시행령)에서 직무발명보상의 근거가 되는 사용자의 이익을 계산하는 방법을 아래와 같이 3가지로 규정하고 있습니다. 그 중 한가지를 적절하게 선택할 수 있습니다.

  • License analogy (Directive N° 6-11)
  • Benefits to the employer (Directive N° 12)
  • Estimation of the value of the invention (Directive N° 13).

 

여기에 발명의 공헌도 Contribution Factor (Directive N° 30)를 반영하여 직무발명보상금을 산정합니다. 통상 average contribution factor ranges from 15 to 25%라고 합니다.

 

License Analogy

  • Reference base (Directive N° 8): A reference base needs to be identified as the relevant basis for applying a reasonable royalty. (Directive N° 19). For instance, if the product (as protected by the patent) is composed of a plurality of components, German courts usually refer to those components of that product which are decisively influenced by the invention. The reference base for a patent that claims a car is not necessarily the value of the whole car. It rather depends on the influence of the invention on the car and which part or parts of the car are decisively characterised by the invention. On the other hand, if the decisive character of the invention influences the whole product (this could be the case with respect to pharmaceutical substances, where the inventive aspect is tied to an active agent) it is reasonable to refer to its whole value. If the invention influences only parts of the product, it is acceptable to take only a percentage of its value. To determine the reference value, German courts are weighing the problem solved by the patented invention and its relevance for the product concerned.
  • Net sales revenues: These revenues do not contain costs for packaging, discounts, value added taxes VAT and agent’s commissions.
  • Reasonable royalty rate: Reference can be made to license agreements that have already been concluded by the employer with third parties. In the absence of such agreement(s), industry practices must be considered.
  • Scaling: If the product is manufactured and sold in very high numbers, employers like to apply a sliding scale, which has a reducing effect on the compensation starting from a certain quantity. This must, however, be common practice in the relevant industry sector or require that high numbers of sold products can be attributed to efforts and achievements of the employer. The success of a product is not necessarily triggered by the patent of which the product makes use. Also other factors such as the branding, advertisement, reputation of the company etc. might be decisive for the decision of the purchaser. Accordingly, the royalty rate is progressively reduced depending on the turnover achieved with the product. For instance, the Appeal Court Düsseldorf applied in matter a scaling starting from a turnover which exceeded €13 Mio, i.e. for the turnover below €13 Mio, the full royalty, from €13 Mio- €25 Mio only ¾ of the royalty rate, from €25 Mio- €50Mio only ½ of the royalty rate, above €50Mio only ¼ of the royalty rate had to be paid. This is only an example. The case law gives examples where a scaling was applicable starting from even significantly lower turnovers (€1.5 Million).
  • Plurality of Patents: A further aspect which has decreasing effect on the royalty rate is the question whether other patents are used by the concerned product. If a plurality of patented inventions applies to a particular product, German courts consequently decrease the royalty of the different individual inventions.

 

Benefit to the Employer, Estimation of the Invention’s Value (rarely used)

 

3.     실무상 통상적으로 사용하는 가상 라이선스 방식의 보상액 산정 사례

 

E x A = C

 

C= Compensation of the employee: If there is more than one employee-inventor, C has to be shared according to their respective contributions.

 

E= Value of the invention: E makes reference to quotient of the reference base (see above) and the reasonable royalty. If the reference base refers to the value of the whole product, the revenues of the net sales price have to be multiplied with reasonable royalty which price usually paid for the invention on the market (turnover x reasonable royalty). The right royalty rate depends on many factors (see above). If the product is sold in high numbers, the employer may apply a slide scaling to the royalty rate, with decreasing effect.

 

A= Contribution factor: The contribution factor depends on the circumstances surrounding the tasks that led to the invention, how the problem was solved and the employee’s role and position in the company. This factor is inherently open to dispute. Average factors range between 10 to20 per cent. Reference can be made to the following point scale:

 

a+b+c  =    3  4  5  6  7  8   9  10  11 12  13  14  15  16  17  18  19 (20) (p)

A          =    2  4  7 10  13 15  18 21  25 32  39 47  55 63  72 81  90 (100) [%]

 

The following sub-factors of A (a+b+c) are used to assess the quantity of points (p). Each quantity of points corresponds to a percentage (such as 6 p = 10 per cent).

 

(a) Contribution of the employee (1-6 points): The employer sets the problem, but also gives the employee specific instructions as to the method he or she needs to employ to solve the problem (low number of points, e.g., 1p).The invention lies outside or is far removed from the employee’s usual area of responsibilities and he or she solved the problem independently (high number of points, e.g., 6p).

 

(b) Contribution of the company (1 to 6 points): To what extent does the employee rely on company resources to solve the problem? The less the company contributes, the higher the number of points.

 

(c) Position of the employee within the company (1 to 8 points): The more the employee is involved in research and development, the lower the number of points.

 

4.     구체적 계산 사례

 

Inventor discovered the problem to be solved on his or her own: However, he knew of shortcomings in the company which led him to the problem: a = 2

 

Inventor found solution using a combination of individual knowledge and company resources: b = 2

 

Inventor holds a university degree and is a research assistant in the company: c = 4

 

계산 결과 : a + b + c = 8 point à Contribution Factor 15 %

가상의 로열티 총액 x 15% = 직무발명보상금

공동발명의 경우 각 공동발명자의 기여도를 곱한 금액 = 최종 각 발명자의 직무발명보상금

 

KASAN_독일의 직무발명보상금 산정 관련 법령 및 실무사례.pdf

 

 

 

작성일시 : 2017. 7. 5. 07:00
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