Pursuant to the Industrial Property Law No. 6769 ("IPL"), an employee is either a person who, under a private law contract or a similar legal relationship, is in the service of another person and is obliged to fulfill this service relationship towards an employer in a personal dependence in relation to a specific work assigned by the employer, or a public official.
The "Regulation on Employee Inventions, Inventions Made in Higher Education Institutions and Inventions Arising in Publicly Supported Projects" ("Regulation"), which entered into force after being published in the Official Gazette dated 29.09.2017 and numbered 30195, stipulates various rights and obligations for employers and employees with regard to employee inventions.
Service Inventions
According to the IPL, service inventions are those made by an employee in the course of employment in an enterprise or public administration as a result of obligatory activity, or those made during the employment relationship within the operational limits of the workplace, largely based on the experience and work of the enterprise or public administration. Inventions that do not qualify as service inventions are referred to as free inventions under the IPL.
Rights and Obligations of the Parties in Service Inventions
In the event that the invention is made by the employee, the parties have certain rights and obligations regarding notification, payment of compensation, filing a patent application and confidentiality.
Employee Obligations
1. Notification Obligation
The IPL imposes an employer notification obligation on the employee for both free inventions and service inventions. As per the IPL, this notification must be made by the employee without delay.
The invention may be notified to the unit official designated by the employer or directly to the employer. The notification to be made by the employee(s) who made the invention should explain how the invention was realized, which resources and experience of the workplace were used, and the persons who contributed to the invention. If the employer is not notified, the employee will be liable for the damages arising pursuant to Article 5/7 of the Regulation.
The employer has the right to make a full or partial claim in writing within four months from the date of the employee's notification to the employer. If the said notification is not made, the invention becomes a free invention. In free inventions, the right ownership belongs only to the inventor.
2. Confidentiality Obligation
The employee is obliged to keep the service invention confidential unless it qualifies as an independent invention.
Rights and Obligations of the Employer
1. Application Obligation
The employer is obliged to file a patent application with the Turkish Patent Office for inventions for which full right ownership is claimed. However, if it is believed that the invention should be kept as a trade secret, the employer may refrain from filing an application.
2. Obligation to Pay Remuneration
If a right to the service invention is claimed in whole or in part, the employer is required to pay a reasonable remuneration to the employee. In determining the remuneration, the relevant factors are the economic value of the service invention, the employee's duty in the enterprise and the contribution of the enterprise to the realization of the service invention. In case the service invention is made by more than one employee, the remuneration and the method for its payment should be evaluated separately for each employee.
However, if the employer claims full entitlement, it is obligatory as per Article 7 of the Regulation to pay the employee an incentive award independent of the remuneration.
3. Confidentiality
The employer is obliged to respect the confidentiality of the invention unless claiming full rights over the employee invention.
Conclusion
When an invention is made by an employee, various rights and obligations arise for both the employee and the employer. When an employee makes an invention, it is obligatory to notify the employer without delay, regardless of the nature of the invention. If claiming full right ownership, the employer will, as a rule, be obliged to file a patent application for the invention. However, in case the employer claims right ownership, the employee has the right to demand remuneration from the employer. It is crucial to obtain legal advice from professionals for these processes to be carried out duly and without any loss of rights.
Originally Published 9 August 2024
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