In Romania, a new law on employee inventions entered into force on 29 June 2014 (Law 83/2014). This new law abrogates former provisions on employee inventions set forth inter alia by the country's Patent Law (Law 64/1991).
The scope of the Law 83/2014 is inventions created by employees of legal entities that are subject to either private or public law, [art.1 (1) (a) (b) of Law 83/2014].
Compared to former provisions, the new law inter alia:
- provides the express definition of the term employee" - "any natural person who, based on an individual employment agreement, renders a remunerated activity for a person of public or private law under the authority of such person" [art. 2(1) (a) of the Law 83/2014];
- expressly specifies that it applies only to those inventions subject to protection by patent or utility model1,2;
- defines two category of employee inventions, namely:
- "inventions resulting from duties expressly assigned to the inventor by their individual employment agreement and job description, or by other deeds compulsory for the inventor, which provide an inventive mission for the inventor" (invention with an inventive mission) [art. 3(1) (a) of Law 83/2014];
- inventions obtained during the period of an individual employment agreement and also within a maximum two years following the termination of such agreement, as the case may be, by knowing or using the experience of the employer, by using the employer's material resources, pursuant to the inventor's training and expertise acquired due to the employer's care and on the employer's expense, by using information resulting from the activity of the employer, or made available by the latter ("inventions without an inventive mission");
- extends the category of inventions without an inventive mission to those inventions created by the employee within a maximum period of two years following the termination of the employment agreement (please refer to the above definition of inventions without an inventive mission) [art. 3 (1) (b) of Law 83/2014];
- expressly provides the competence of the employer to classify
the employee's invention in one of the two categories:
inventions with or without an inventive mission
[art. 4 (1) of Law 83/2014];
provides a minimum compulsory period within which the employee should be notified about i) the employer's decision on the classification of the employee's invention in one of the two categories mentioned above, and ii) the option of the employer to claim the right conferred by the employee's invention. This period is four months as of the date when the employer is notified by the employee on the created invention, "with enough clear data to define the invention and the conditions of the creation thereof". A longer period can be set by the employer's express internal regulations [art. 4 (3) of the Law 83/2014]. The classification of the employee invention decided by the employer can be contested by the inventor to the competent Court within four months as of the notification of the employee.
Regarding inventions without an inventive mission, the former provisions provided the employer's preemption right for the execution of a transfer agreement with respect to the employee's invention. This preemption right had to be exercised within three months as of the receipt of employee's offer. In case the consideration of such agreement was not consented, it was determined by the Court [art. 5 (6) of Law 64/1991].
Under former provisions of the Law 64/1991, the property of the right over an invention with an inventive mission belonged to the employer subject to the filing of a Romanian patent application for such invention within 60 days as of the date of receipt of the employee's written information about the invention's description. The possibility for the parties to decide on the transfer of rights over the employee invention by an agreement was permitted by the law.
- provides a remuneration payable to the employee for inventions without an inventive mission claimed by the employer (art. 6, 7 of the Law 83/2014). This remuneration is payable in addition to the employee's salary set under the employment agreement.
According to the provisions of the Law 83/2014, the right over the employee invention belongs to:
- the employer for inventions with inventive mission, regardless of whether such employer is a public or private law entity. [art. 5 (1) of the Law 83/2014];
- the employee for inventions with inventive mission, if it is expressly provided under agreement and the employer is a public law entity having an object of activity in the field of research and development. [art. 5 (2) of the Law 83/2014];
- the employee for inventions without inventive mission if the employer (public or private law entity) does not claim the invention within the prescribed minimum period of four months described above. [art. 5 (3) of the Law 83/2014];
- the employee under the conditions provided by the Law 64/1991, in case of those inventions that are neither part of inventions without inventive mission nor part of inventions with inventive mission. [art. 5 (4) of the Law 83/2014].
- we deem that the claim of property right for the employee invention within the prescribed minimum period of four months mentioned above pertains only to the category of inventions without inventive mission, since the law expressly provides the property rights of the employer for inventions with inventive mission, without specifying any prior conditions for claiming of such right. Moreover, in case of inventions without inventive mission, the employer's property right over the employee invention is expressly conditioned by the act of claiming of such right by the employer. In conclusion, we deem that the classification of the invention in the category of inventions with inventive mission suffices to include the right over the employee invention in the ownership of the employer, without a need to expressly claim property right for such invention.
- even though the law expressly provides ownership to the employer for the right conferred by inventions with inventive mission under the conditions mentioned above, we deem that such right could be validly transferred (in total or in part) to the employee on the base of an assignment agreement executed by the parties by virtue of the principle of law "pacta sunt servanda". However, the execution of such agreement should comply with the special legal provisions that regulate the incorporation and operation of entities of public or private law.
1 Comment: per a contrario, those employees' inventions that are not subject to protection by patent or utility model do not fall under the provisions of the Law 83/2014, but they do fall under provisions of the Law 64/1991.
2 the protection by patent can be acquired by any
invention , if such invention is new, involves an inventive step,
and can be put to industrial application.
An invention is new if it is not part of the state-of-the-art [state-of-the-art comprises i) all knowledge made available to the public by means of a written or oral description, by use, or in any other way before the date of filing of the patent application for the invention at issue, and ii) the content of the patent applications filed with Romanian Patent Office and international applications that entered into national phase in Romania, or European patent applications designating Romania as filed, provided that their filing date is prior to the date of filing of the patent application for the invention at issue and the fact that they were published on or after such date (art. 10 of the Law 64/1991)];
an invention is considered as involving an inventive step if, for a skilled person, this invention does not obviously result from the knowledge consisted of in the state of the art;
an invention is deemed suitable for industrial application if its object could be manufactured or used in an industrial field, including in agriculture;
an invention is protected by utility model provided that the invention i) is in a technical field (inventions having the subject-matter a biological material or a product consisting of a chemical or pharmaceutical substance, are not protected by utility model; as well, process/method-inventions are not subject to protection by utility model), ii) is new, iii) exceeds the framework of mere professional skill and iv) is susceptible of industrial application.
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