(LAW ON INDUSTRIAL PROPERTY NO. 6769 IN FORCE SINCE 10 JANUARY 2017)
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 The provisions of the repealed Decree-Law No. 551 of 27.06.1995 on Patents and Utility Models regarding "Employee Inventions" which had been adopted from the German Act on the subject have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 As no such regulation was issued under the repealed Decree-Law No. 551 the issue of the determination and calculation of the fee to be paid to the Employee inventor remained unaddressed, for want of legislative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.
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 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In contrast to the repealed Decree-Law No. 551 which made a distinction between "patentable inventions" and "non-patentable technical improvements" (Art. 16/1+2 – Art. 33) within the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-patepatentable 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 projectss supported/financed by Public Bodies (Art. 122)
From thereon it can be said that the IP Code provides 3 different regimes in respect of "Employee inventions" depending the context within which they have been made.
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 Contract
- Employer – Employee may freely
determine the terms of their contractual relation (Art. 117/1),
- 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 of
- Defense, and
are subject to the provisions of the IP Code on Employee Inventions to the extent remain reserved
the provisions of the specific Laws these bodies are subject to (where applicable) and the Article 121 of the IP Code (Art. 121/1)
But are subject to the Statutory Imperative Provisions on Employee Inventions (Art. 113 to 122)
- "No agreement can be entered
into" and "no (factual) implementation/practice can be
made by the Employers" which
- would be in breach of the legal provisions on Employee Inventions or
- would be against Employee's interests (Art. 117/1 & 2).
According to Art. 25(1) of the ad hoc Regulation "the terms of the collective work or service contract" (if any) or "the practice as is implemented in the work premises" which are "favourable to the Employee" are to be taken as basic reference.
- The agreement between the Employer
and Employee is deemed nil and void to the extent
- it is greatly unfair
- even when it is not in breach of the imperative legal provisions on Employee Inventions (Art. 117/2).
It may be worth to note that the act is silent about the ownership of the invention as to with which party it may rest and as to what happens in case the agreement between the Employer and Employee is deemed nil and void on the basis of the imperative provisions of the act.
- The same rule is applicable by analogy to the "fee determined to be paid" for the invention (Art. 117/2).
- Deadline for contesting within 6
months, at the latest, from the termination oof the work/employment
contract (Art. 117/3).
- the fairness of the agreement
- the "fee determined to be paid" for the invention:
Requirements for "Employee Invention"
As specified under Book Four
- Patents & Utility Model Chapter 5
- Employee Invention
To qualify as an "Employee Invention", the invention is to be realized (Art. 113/1):
- "In the course of the work relation"
This term implies a contractual relation as the law is silent about a formal work/employment contract in written form
- "Between the Employer",
which, according to Art. 113/1 may be
- "aa (private) Enterprise/firm"
- "or the Public administration"
"and the Employee", which according to Art. 113/3 includes also
- "students" and
- "interns, who are not paid and who have an indefinite duration of work assignment"
- "During the work assignment the Employee is engaged/obliged to provide".
This term implies that the work assignment of the Employee is carried out at the premises of the Employee as the law is silent about the place where the Employee is to carry out his work assignment.
- The invention
- may result from "the nature of the Employee's work assignment" or
- may be based "to a large extent on the experience and on the activities/works of the Employer".
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.