The Regulation on Employees' Inventions, Inventions Made at Higher Education Institutions and Projects with Public Support ("Regulation on Inventions") was published in the Official Gazette on September 29, 2017.
The Regulation on Inventions comprehensively regulates patent and utility model rights with respect to inventions made by employees, at higher education institutions, and in projects receiving public support.
The Regulation on Inventions declares that an invention created by an employee during his/her employment, (i) while fulfilling his/her duties for the employer (either a public or private enterprise), or (ii) based mainly on the experience and works of the public or private enterprise, is defined as a "service invention." All other inventions, which fall outside the scope of service inventions, are defined as "independent inventions." Service or independent inventions (which can be protected by either a patent model or a utility model) created by an employee are collectively defined as "employee inventions."
An employee is defined under Article 4(b) of the Regulation on Inventions (as well as the Law No. 6769 on Industrial Property), as a person who is in the service of another person, and who is obliged to perform his/her duties within the bounds of an employment relationship with respect to a particular work assigned by the employer, and with a personal dependence on the employer.
As per Article 5 of the Regulation on Inventions, an employee who makes a service invention is obliged to notify his/her employer of this invention, and to provide technical explanations regarding the invention. As per Article 6 of the Regulation on Inventions, employers are entitled to claim intellectual property rights on service inventions (partially or in full) within 4 months following the receipt of the notification to be made by the employee who made the service invention. Such claims shall be made in writing.
If the employer does not claim any rights regarding the service invention within this specified time period, the service invention then becomes (and is treated as) an independent invention. The employee may make use of such an independent invention without being subject to any further restrictions related to his/her employment. Moreover, if the employer claims rights on the service invention in full, then all rights relating to the invention pass to the employer as of the date of arrival of the written notification to the employee. On the other hand, if the employer only claims partial rights on the service invention, the invention is converted into (and treated as) an independent invention. However, the employer may use the invention based on its partial rights on the invention.
If an employee makes an independent invention while he/she is in an employment relationship with an employer, then the employee is obliged to notify the employer of such an invention. The employee must provide the employer with explanations in the notification that may enable the employer to determine whether the invention is indeed an independent invention. The employer may object to the categorization of the invention as an independent invention within 3 months of the notification.
If the invention falls within the scope of the enterprise's area of activity, or if the enterprise is involved in serious preparations to conduct business in that area of activity, the employee is obliged to make an offer to the employer to allow the employer to make use of his/her invention, without granting full rights to the employer on the invention. If the parties cannot come to an agreement on the conditions of such an arrangement, then the Court will determine the conditions of the arrangement upon the parties' submission of the dispute to the Court.
If it is clear that the independent invention should not be considered to fall within the scope of the employer's activities, then the employee is not subject to a notification obligation with respect to the employer.
An employer can also claim to be the holder of the rights of an invention if it was made by using the knowledge and tools available at the enterprise, if such knowledge and tools are related to the general sphere of activity of the enterprise. The ownership of rights with regard to inventions that are created within the scope of an agreement other than an employment agreement is determined by the particular provisions of that agreement.
Consequently, the Regulation on Inventions, along with the Law No. 6769 on Industrial Property, brings a breath of fresh air and much-needed clarity with respect to inventions created by employees, as this important subject has now been regulated in detail for the first time. Therefore, one may expect that these new and innovative regulations will be the most effective way to settle disputes arising between employers and employees in regard to workplace inventions.
This article was first published in Legal Insights Quarterly by ELIG, Attorneys-at-Law in December 2017. A link to the full Legal Insight Quarterly may be found here.
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.
