Employee Inventions and Employee Designs
This is one of main areas of intervention of the new IP Code. The provisions of the repealed Decree-Law No. 551 of 27.06.1995 on Patents and Utility Models regarding "Employee Inventions" which had been adopted from the German Act on the subject have undergone substantial structural modifications under the new IP Code.
Additionally the ad hoc Regulation issued under the IP Code introduces anew the criteria and parameters for determining and calculating the fee to be paid to the Employee inventor. As no such regulation was issued under the repealed Decree-Law No. 551 the issue of the determination and calculation of the fee to be paid to the Employee inventor remained unaddressed, for want of legislative basis, until the coming into force of the ad hoc Regulation on 29 September 2017.
Although quite detailed and precise, the new rules on Employee Inventions call inevitably for interpretation on several points.
This article aims to underline these structural changes and to provide information and guidance on the subject.
- The Law
In the new IP Code, the Employee Designs and Employee Inventions are addressed under separate but to large extent parallel provisions respectively
- in Book Three concerning Designs under Chapter 4 for "Employee Designs" and
- in Book Four concerning Patents and Utility Models under Chapter 5 for "Employee Inventions".
- The Regulations
- The general purpose Regulation of 24 April 2017 issued under the new IP Code contains no provision regarding "Employee Inventions" and "Employee Designs".
- An ad hoc regulation
which entered into force on 29 September 2017 and issued under the
new IP Code is exclusively directed to "Employee
Inventions" and establishes principally the criteria and
parameters for determining the fee to be paid to the Employee, its
modality of payment and the rules of arbitration regarding them in
case of disagreement.
This ad hoc regulation contains also no provision directed to "Employee Designs".
Employee Inventions applicable solely to "Patentable Inventions"
In contrast to the repealed Decree-Law No. 551 which made a distinction between "patentable inventions" and "non-patentable technical improvements" (Art. 16/1+2 – Art. 33) within the context of Employee Inventions, the new IP Code is silent about "non-patentable technical improvements". Accordingly in the new IP Code "Employee inventions" are restricted to "patentable inventions" only. (Art. 113/1).
Main distinction between Service Inventions and Free Inventions
The IP Code distinguishes between:
- Service Inventions and
- Free Inventions
and regulates Employee Inventions according to this basic distinction which constitutes the main regime applicable, by default and unless otherwise specified, to the firms and bodies of the private and public sectors alike.
3 different regimes under Employee Inventions
While keeping this basic distinction between Service Inventions and Free Inventions IP Code provides differentiated regimes in respect of inventions:
- made in High Education Bodies and in universities (Art. 121)
- made under projects supported/financed by Public Bodies (Art. 122)
Employer – Employee Relation based on - Freedom of Contract but subject to
- Statutory Imperative Provisions on Employee Inventions and
- Other Specific Laws (where applicable)
The contractual relations between the Employer and Employee are based on:
- The principle of Freedom of
- Employer – Employee may freely determine the terms of their contractual relationship (Art. 117/1), (Art. 113/4)
- The parties enjoy freedom of contract
as from the date when:
- the application for patent is filed, (for Service Inventions)
- the declaration of invention is made by the Employee as of her/his reporting obligation (for Free Inventions). (Art. 117/1 – last sentence)
- The imperative provisions of the IP Code on Employee Inventions (Art. 113 to 122) These provisions constitute the legal frame beyond which the work/employment contract between the Employer and Employee may be deemed nil and void (Art. 117/2).
- Law No. 6550 of 03 July 2014 applies
to inventions made in research bodies subject to it.
Art. 121 of the IP Code regarding the inventions made in High Education Bodies (Universities) shall apply by analogy on situations/cases where Law No. 6550 is silent (Art. 113/6)
- The inventions made in High Education
Bodies (Universities), which are:
- those specified under Art. 3/c of Law No. 2547 and
- those depending from the ministries
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.