Employer about the service invention
Inventions are made by people. Money on inventions makes the company. How can a company avoid problems with the author of the invention and other interested parties? Read the patent expert’s explanations.
What is a service invention
The concept of a service invention is defined in clause 1 of Article 1370 of the Civil Code of the Russian Federation [1]: “An invention, utility model or industrial design created by an employee in connection with the performance of his job duties or a specific task of the employer is recognized as a service invention, service utility model, or ". At the same time, the employer must be ready to document that the creation of new technical solutions, which may later qualify for legal protection as an invention, is part of the job duties of the employee or in the specific task of the employee, issued by the employer.
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Who owns the right to service the invention
It is necessary to distinguish the right of authorship to the service invention and the right to the service invention as an object of industrial property.
According to clause 2 of Article 1370 of the Civil Code of the Russian Federation, “the right of authorship to a service invention, a service utility model or a service industrial design belongs to the employee (author)”. The right of authorship is inalienable, has no statute of limitations, the rejection of it is invalid. In other words, the right of authorship is not a property right, it cannot be bought, sold, donated, lent, leased, pledged or even abandoned. Originating once, it remains with the author until the end of his life and even after his death.
The right to a service invention as an object of industrial property is a property right and, in general, belongs to the employer. According to clause 3 of Article 1370 of the Civil Code of the Russian Federation, “the exclusive right to a service invention, a service utility model or a service industrial design and the right to receive a patent belong to the employer, unless otherwise provided by employment or other contract between the employee and the employer.”
How to make a service invention
So, for the recognition of the invention of service it is necessary that it was created by the employee in connection with the performance of his job duties or a specific task of the employer.
In practice, this means that, at a minimum, there should be a properly executed job description of the employee or its equivalent, which clearly indicates that the creation of new technical solutions in a certain technical area is directly in the employee’s responsibilities, or there should be a properly executed task for development, design, engineering, etc. system, device, node, details, algorithm, etc. Tasks for the development, design, construction, etc. It should not contradict the job description of the employee, otherwise the author of the invention will not be viewed as an employee of the employer and the relations between the parties will have a different form (see border cases ).
Proper registration means that the document must be dated, approved in accordance with the rules for approving documents valid for the employer, and contain proof that the employee is familiar with this document. Typically, such a document is on paper. If the document exists only in electronic form, you should make sure that in the event of a trial, it will be recognized by the court as the equivalent of a paper document (for example, signed with electronic digital signatures issued by the relevant certification authorities).
If the contract between the employee and the employer does not stipulate otherwise in a labor or other (apparently collective, Article 40 of the Labor Code of the Russian Federation), then, in accordance with clause 4 of Article 1370 of the Civil Code of the Russian Federation, “the employee must notify the employer in writing of the creation the employer's assignment of such a result in respect of which legal protection is possible. ” The notification must contain sufficient information for subsequent identification of the invention.
Further, the law grants the employer the right to decide on the future fate of the alleged invention within four months: “if the employer does not file an application for a patent for the relevant service invention, utility service model or industrial design sample within four months from the date of notification by the employee intellectual property, will not transfer the right to receive a patent for a service invention, utility service model or service an industrial design to another person or fails to inform the employee about the confidentiality of information about the relevant result of intellectual activity, the right to receive a patent for such an invention, utility model or industrial design belongs to the employee ”(second paragraph of clause 4 of article 1370 of the Civil Code of the Russian Federation).
That is, after four months of inactivity of the employer, the invention is no longer recognized as a service one and goes into the category of borderline cases . To avoid the accidental occurrence of a similar situation, the message to the employee about the preservation of information about the relevant result of intellectual activity in secret should be carried out in writing. This document must also be dated, approved in accordance with the rules for the approval of documents applicable to the employer, and contain evidence that the employee is familiar with this document. Similarly, should be done if four months were not enough for processing and filing a patent application for an invention.
If the invention has several co-authors, it is advisable to document the creative contribution to the invention of each of the co-authors and the distribution of remuneration or compensation between the co-authors.
It should be noted that the relationship of the employee-author of the invention with the employer concerning the rights to the invention, in any case, go beyond the labor relations and are regulated in accordance with the norms of civil law. At the same time, provisions relating to rights to an invention may be included in documents regulating labor relations (for example, in an employment contract or a collective agreement), but they should not contradict the norms of civil law. For example, it is meaningless to include in the labor contract a provision on the transfer to the employer of an exclusive right to an invention that is not official, since such a provision would be declared invalid.
Compensation to the author of the service invention
Paragraph three of clause 4 of Article 1370 of the Civil Code of the Russian Federation establishes cases in which an employee who is the author of an official invention is entitled to remuneration: “If an employer obtains a patent for an official invention, an official utility model or industrial design, or decides to preserve information about such an invention, the utility model or industrial design in secret and notifies the worker about it, or will transfer the right to receive the patent to another person, or will not receive a patent on the application filed by him for reasons depending on him, He is entitled to remuneration. " This provision does not clarify the situation with the inaction of the employer regarding the service invention, when he actually keeps information about the service invention in secret, but does not inform the employee about it and does not pay him a reward. It can be assumed that such a case of inaction of the employer is also the basis for the payment of remuneration to the employee, and in the event of a dispute, the basis for the employee to apply to the court.
Payment of remuneration to the author of the service invention is the responsibility of the employer and, although some experts express the opinion that when transferring the rights to the service invention to a third party, the transaction may be burdened with the obligation to pay remuneration to an employee with whom the employer does not have any relationship [2], in paragraph 5 of the Resolution Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation dated March 26, 2009 No. 5/29 [3] clearly stated: “the legislator and perativno determines the person paying the compensation or remuneration respectively. That person is the employer (the person who was the employer at the time of the creation of the service work). Consequently, even if the rights to the result of intellectual activity belonging to the employer are transferred (granted) under the contract for the alienation of the right or under the license contract, the employer remains the person obligated to pay compensation or remuneration to the employee. This duty may be transferred to other persons in the order of universal succession. The amount of compensation or remuneration is determined by the contract, and in the case of a dispute - by the court. Such disputes are within the jurisdiction of the courts of general jurisdiction. ” Considering that lower courts perceive decisions of higher courts as an unconditional guide to action, it will be safer for an employer to accept the need to pay remuneration to an employee who created a service invention even after assignment of rights to an invention to a third party.
The third paragraph of clause 4 of Article 1370 of the Civil Code of the Russian Federation also establishes that “the amount of remuneration, the conditions and procedure for its payment by the employer are determined by an agreement between him and the employee, and in the case of a dispute, by the court”. Clause 5 of Article 1246 of the Civil Code of the Russian Federation states: “The government of the Russian Federation has the right to set minimum rates, the procedure and terms for paying remuneration for service inventions, service utility models, service industrial designs.”
In the Commentary to Part 4 of the Civil Code of the Russian Federation [1] it is rightly noted that this norm (by the way, recently migrated [4] to Article 1246 from the fourth paragraph of Article 4 of Article 1370 of the Civil Code of the Russian Federation), is extremely uncertain. The government of the Russian Federation has the right to establish minimum interest rates, but it has the right not to establish what has been happening for a number of years. Thus, in the Russian legislation, instead of the former principle of paying the employee proportionate remuneration, which operates in the patent laws of many countries, the contractual principle of paying remuneration was approved, which was adjusted by the hypothetical possibility of the Government accepting minimum rates of such remuneration.
Non-service invention: borderline cases
An invention is not recognized as service if the task of developing, designing, constructing, etc., as a result of which the invention is created, goes beyond the job description of the employee and if the invention is created as a result of work under a civil law contract. In the first case, the relationship of the inventor with the employer should be secured by a civil law contract and in both cases it is necessary to add provisions to the civil law contract determining the distribution of the parties' rights to the invention, as well as the amount, conditions and procedure for paying remuneration or compensation.
An invention is also not recognized as service if it was created by an employee on his own initiative, even if at his workplace. In particular, clause 5 of Article 1370 of the Civil Code of the Russian Federation states that “an invention, utility model or industrial design created by an employee using monetary, technical or other material means of the employer, but not in connection with the performance of his work duties or a specific task of the employer, is not service. The right to receive a patent and the exclusive right to such an invention, utility model or industrial design belong to the employee. In this case, the employer has the right, at his choice, to demand granting him a gratuitous simple (non-exclusive) license to use the created result of intellectual activity for his own needs for the entire duration of the exclusive right or reimbursement of expenses incurred by him in connection with the creation of such an invention, utility model or industrial design. ".
The invention ceases to be official and in the event that within four months the employer did not decide on the future fate of the alleged invention and did not perform the actions provided by law in order to exercise his right to the official invention. In this case, in accordance with paragraph 4 of clause 4 of Article 1370 of the Civil Code of the Russian Federation, “an employer has the right to use a service invention, utility service model or industrial design in its own production under a simple (non-exclusive) license with payment of compensation to the patent owner , the amount, terms and procedure of payment of which are determined by the contract between the employee and the employer, and in the case of a dispute - by the court ”. It should be noted that in the case of an off-site invention, only the contractual principle of determining the amount, conditions and procedure for the payment of compensation to the patent owner, the inventor, is valid. You should also pay attention to the possibility of making certain conditions for the payment of such compensation, for example, some additional actions may be stipulated, which the patent owner-inventor must take, or economic indicators, upon reaching which the employer must pay compensation.
The Importance of Properly Designing Relationships with the Inventor
The importance of correcting the relationship with the author of the invention becomes apparent when the use of the invention begins to bring tangible income to the patent owner and disagreements arise between the employer and the author of the invention or his successors. Given the long term of the patent - up to 20 years, subject to the timely payment of fees for maintaining a patent in force - the total income can be very significant and the appearance of disagreements is more likely than large sums appear in the accounting documents.
Judicial practice on the issue of service inventions shows that in most cases the courts are inclined to consider the formally acting [5] norms of the Law “On Inventions in the USSR” [6], which determine the minimum amount of payment to an author of an invention as subsidiary, i.e. taken into account only if there is no agreement between the employer and the author of the invention.
The same rules are indicated by the information letter of Rospatent dated June 25, 2008 [7]. It should be noted that these norms (payment in the amount of not less than 15 percent of the profits (corresponding part of the income) annually received by the patent owner-employer from using the invention, as well as not less than 20 percent of the proceeds from the sale of a license without limiting the maximum remuneration or at least 2 percent of the cost of production (works and services) attributable to this invention, if the beneficial effect of the invention is not expressed in profit or income) were developed in Soviet times for conditions of a planned economy with a directively regulated profitability and their practical application in modern conditions can lead to greatly overestimated (15 percent profit from sales of mass demand products) or severely underestimated (2 percent cost, for example, of a software product, the cost of which can be close to the cost of the carrier) payout values. In addition, the question of determining the very size of the profits due to the invention is very complex from a methodological point of view and does not have an unequivocal solution. Perhaps this is why the courts most often consider these norms in accordance with the optional categories of civil law, i.e. give priority to express agreements between the employer and the inventor.
The Law "On Inventions in the USSR" also regulates the terms of remuneration payment: "remuneration is paid to the author no later than three months after the expiration of each year in which the invention was used, and no later than three months after receipt of proceeds from the sale of a license" and does not provide for flexible payment schemes. Therefore, it appears that the timely and competent design of the relationship between the employer and the author of the invention should be in the interests of both the employer and the author of the invention.
Proper registration of the relationship of the employer by the inventor is also important in the event of a possible subsequent alienation of the right to an invention or the granting of a license to a third party, as agreements on the alienation of exclusive rights and licenses are subject to state registration and Rospatent during such registration necessarily checks the title documents and may well request documents .
Literature
1. Civil Code of the Russian Federation. Part 4
2. .., .. (). – .: , 2009.
3. 26 2009 . № 5/29 « , ».
4. 23.07.2013 N 222- « ».
5. – 14 1993 . № 822 « ».
6. 31 1991 . № 2213-I « ».
7. 25 2008 . « , , ».
What is a service invention
The concept of a service invention is defined in clause 1 of Article 1370 of the Civil Code of the Russian Federation [1]: “An invention, utility model or industrial design created by an employee in connection with the performance of his job duties or a specific task of the employer is recognized as a service invention, service utility model, or ". At the same time, the employer must be ready to document that the creation of new technical solutions, which may later qualify for legal protection as an invention, is part of the job duties of the employee or in the specific task of the employee, issued by the employer.
')
Who owns the right to service the invention
It is necessary to distinguish the right of authorship to the service invention and the right to the service invention as an object of industrial property.
According to clause 2 of Article 1370 of the Civil Code of the Russian Federation, “the right of authorship to a service invention, a service utility model or a service industrial design belongs to the employee (author)”. The right of authorship is inalienable, has no statute of limitations, the rejection of it is invalid. In other words, the right of authorship is not a property right, it cannot be bought, sold, donated, lent, leased, pledged or even abandoned. Originating once, it remains with the author until the end of his life and even after his death.
The right to a service invention as an object of industrial property is a property right and, in general, belongs to the employer. According to clause 3 of Article 1370 of the Civil Code of the Russian Federation, “the exclusive right to a service invention, a service utility model or a service industrial design and the right to receive a patent belong to the employer, unless otherwise provided by employment or other contract between the employee and the employer.”
How to make a service invention
So, for the recognition of the invention of service it is necessary that it was created by the employee in connection with the performance of his job duties or a specific task of the employer.
In practice, this means that, at a minimum, there should be a properly executed job description of the employee or its equivalent, which clearly indicates that the creation of new technical solutions in a certain technical area is directly in the employee’s responsibilities, or there should be a properly executed task for development, design, engineering, etc. system, device, node, details, algorithm, etc. Tasks for the development, design, construction, etc. It should not contradict the job description of the employee, otherwise the author of the invention will not be viewed as an employee of the employer and the relations between the parties will have a different form (see border cases ).
Proper registration means that the document must be dated, approved in accordance with the rules for approving documents valid for the employer, and contain proof that the employee is familiar with this document. Typically, such a document is on paper. If the document exists only in electronic form, you should make sure that in the event of a trial, it will be recognized by the court as the equivalent of a paper document (for example, signed with electronic digital signatures issued by the relevant certification authorities).
If the contract between the employee and the employer does not stipulate otherwise in a labor or other (apparently collective, Article 40 of the Labor Code of the Russian Federation), then, in accordance with clause 4 of Article 1370 of the Civil Code of the Russian Federation, “the employee must notify the employer in writing of the creation the employer's assignment of such a result in respect of which legal protection is possible. ” The notification must contain sufficient information for subsequent identification of the invention.
Further, the law grants the employer the right to decide on the future fate of the alleged invention within four months: “if the employer does not file an application for a patent for the relevant service invention, utility service model or industrial design sample within four months from the date of notification by the employee intellectual property, will not transfer the right to receive a patent for a service invention, utility service model or service an industrial design to another person or fails to inform the employee about the confidentiality of information about the relevant result of intellectual activity, the right to receive a patent for such an invention, utility model or industrial design belongs to the employee ”(second paragraph of clause 4 of article 1370 of the Civil Code of the Russian Federation).
That is, after four months of inactivity of the employer, the invention is no longer recognized as a service one and goes into the category of borderline cases . To avoid the accidental occurrence of a similar situation, the message to the employee about the preservation of information about the relevant result of intellectual activity in secret should be carried out in writing. This document must also be dated, approved in accordance with the rules for the approval of documents applicable to the employer, and contain evidence that the employee is familiar with this document. Similarly, should be done if four months were not enough for processing and filing a patent application for an invention.
If the invention has several co-authors, it is advisable to document the creative contribution to the invention of each of the co-authors and the distribution of remuneration or compensation between the co-authors.
It should be noted that the relationship of the employee-author of the invention with the employer concerning the rights to the invention, in any case, go beyond the labor relations and are regulated in accordance with the norms of civil law. At the same time, provisions relating to rights to an invention may be included in documents regulating labor relations (for example, in an employment contract or a collective agreement), but they should not contradict the norms of civil law. For example, it is meaningless to include in the labor contract a provision on the transfer to the employer of an exclusive right to an invention that is not official, since such a provision would be declared invalid.
Compensation to the author of the service invention
Paragraph three of clause 4 of Article 1370 of the Civil Code of the Russian Federation establishes cases in which an employee who is the author of an official invention is entitled to remuneration: “If an employer obtains a patent for an official invention, an official utility model or industrial design, or decides to preserve information about such an invention, the utility model or industrial design in secret and notifies the worker about it, or will transfer the right to receive the patent to another person, or will not receive a patent on the application filed by him for reasons depending on him, He is entitled to remuneration. " This provision does not clarify the situation with the inaction of the employer regarding the service invention, when he actually keeps information about the service invention in secret, but does not inform the employee about it and does not pay him a reward. It can be assumed that such a case of inaction of the employer is also the basis for the payment of remuneration to the employee, and in the event of a dispute, the basis for the employee to apply to the court.
Payment of remuneration to the author of the service invention is the responsibility of the employer and, although some experts express the opinion that when transferring the rights to the service invention to a third party, the transaction may be burdened with the obligation to pay remuneration to an employee with whom the employer does not have any relationship [2], in paragraph 5 of the Resolution Plenum of the Supreme Court of the Russian Federation and the Plenum of the Supreme Arbitration Court of the Russian Federation dated March 26, 2009 No. 5/29 [3] clearly stated: “the legislator and perativno determines the person paying the compensation or remuneration respectively. That person is the employer (the person who was the employer at the time of the creation of the service work). Consequently, even if the rights to the result of intellectual activity belonging to the employer are transferred (granted) under the contract for the alienation of the right or under the license contract, the employer remains the person obligated to pay compensation or remuneration to the employee. This duty may be transferred to other persons in the order of universal succession. The amount of compensation or remuneration is determined by the contract, and in the case of a dispute - by the court. Such disputes are within the jurisdiction of the courts of general jurisdiction. ” Considering that lower courts perceive decisions of higher courts as an unconditional guide to action, it will be safer for an employer to accept the need to pay remuneration to an employee who created a service invention even after assignment of rights to an invention to a third party.
The third paragraph of clause 4 of Article 1370 of the Civil Code of the Russian Federation also establishes that “the amount of remuneration, the conditions and procedure for its payment by the employer are determined by an agreement between him and the employee, and in the case of a dispute, by the court”. Clause 5 of Article 1246 of the Civil Code of the Russian Federation states: “The government of the Russian Federation has the right to set minimum rates, the procedure and terms for paying remuneration for service inventions, service utility models, service industrial designs.”
In the Commentary to Part 4 of the Civil Code of the Russian Federation [1] it is rightly noted that this norm (by the way, recently migrated [4] to Article 1246 from the fourth paragraph of Article 4 of Article 1370 of the Civil Code of the Russian Federation), is extremely uncertain. The government of the Russian Federation has the right to establish minimum interest rates, but it has the right not to establish what has been happening for a number of years. Thus, in the Russian legislation, instead of the former principle of paying the employee proportionate remuneration, which operates in the patent laws of many countries, the contractual principle of paying remuneration was approved, which was adjusted by the hypothetical possibility of the Government accepting minimum rates of such remuneration.
Non-service invention: borderline cases
An invention is not recognized as service if the task of developing, designing, constructing, etc., as a result of which the invention is created, goes beyond the job description of the employee and if the invention is created as a result of work under a civil law contract. In the first case, the relationship of the inventor with the employer should be secured by a civil law contract and in both cases it is necessary to add provisions to the civil law contract determining the distribution of the parties' rights to the invention, as well as the amount, conditions and procedure for paying remuneration or compensation.
An invention is also not recognized as service if it was created by an employee on his own initiative, even if at his workplace. In particular, clause 5 of Article 1370 of the Civil Code of the Russian Federation states that “an invention, utility model or industrial design created by an employee using monetary, technical or other material means of the employer, but not in connection with the performance of his work duties or a specific task of the employer, is not service. The right to receive a patent and the exclusive right to such an invention, utility model or industrial design belong to the employee. In this case, the employer has the right, at his choice, to demand granting him a gratuitous simple (non-exclusive) license to use the created result of intellectual activity for his own needs for the entire duration of the exclusive right or reimbursement of expenses incurred by him in connection with the creation of such an invention, utility model or industrial design. ".
The invention ceases to be official and in the event that within four months the employer did not decide on the future fate of the alleged invention and did not perform the actions provided by law in order to exercise his right to the official invention. In this case, in accordance with paragraph 4 of clause 4 of Article 1370 of the Civil Code of the Russian Federation, “an employer has the right to use a service invention, utility service model or industrial design in its own production under a simple (non-exclusive) license with payment of compensation to the patent owner , the amount, terms and procedure of payment of which are determined by the contract between the employee and the employer, and in the case of a dispute - by the court ”. It should be noted that in the case of an off-site invention, only the contractual principle of determining the amount, conditions and procedure for the payment of compensation to the patent owner, the inventor, is valid. You should also pay attention to the possibility of making certain conditions for the payment of such compensation, for example, some additional actions may be stipulated, which the patent owner-inventor must take, or economic indicators, upon reaching which the employer must pay compensation.
The Importance of Properly Designing Relationships with the Inventor
The importance of correcting the relationship with the author of the invention becomes apparent when the use of the invention begins to bring tangible income to the patent owner and disagreements arise between the employer and the author of the invention or his successors. Given the long term of the patent - up to 20 years, subject to the timely payment of fees for maintaining a patent in force - the total income can be very significant and the appearance of disagreements is more likely than large sums appear in the accounting documents.
Judicial practice on the issue of service inventions shows that in most cases the courts are inclined to consider the formally acting [5] norms of the Law “On Inventions in the USSR” [6], which determine the minimum amount of payment to an author of an invention as subsidiary, i.e. taken into account only if there is no agreement between the employer and the author of the invention.
The same rules are indicated by the information letter of Rospatent dated June 25, 2008 [7]. It should be noted that these norms (payment in the amount of not less than 15 percent of the profits (corresponding part of the income) annually received by the patent owner-employer from using the invention, as well as not less than 20 percent of the proceeds from the sale of a license without limiting the maximum remuneration or at least 2 percent of the cost of production (works and services) attributable to this invention, if the beneficial effect of the invention is not expressed in profit or income) were developed in Soviet times for conditions of a planned economy with a directively regulated profitability and their practical application in modern conditions can lead to greatly overestimated (15 percent profit from sales of mass demand products) or severely underestimated (2 percent cost, for example, of a software product, the cost of which can be close to the cost of the carrier) payout values. In addition, the question of determining the very size of the profits due to the invention is very complex from a methodological point of view and does not have an unequivocal solution. Perhaps this is why the courts most often consider these norms in accordance with the optional categories of civil law, i.e. give priority to express agreements between the employer and the inventor.
The Law "On Inventions in the USSR" also regulates the terms of remuneration payment: "remuneration is paid to the author no later than three months after the expiration of each year in which the invention was used, and no later than three months after receipt of proceeds from the sale of a license" and does not provide for flexible payment schemes. Therefore, it appears that the timely and competent design of the relationship between the employer and the author of the invention should be in the interests of both the employer and the author of the invention.
Proper registration of the relationship of the employer by the inventor is also important in the event of a possible subsequent alienation of the right to an invention or the granting of a license to a third party, as agreements on the alienation of exclusive rights and licenses are subject to state registration and Rospatent during such registration necessarily checks the title documents and may well request documents .
Literature
1. Civil Code of the Russian Federation. Part 4
2. .., .. (). – .: , 2009.
3. 26 2009 . № 5/29 « , ».
4. 23.07.2013 N 222- « ».
5. – 14 1993 . № 822 « ».
6. 31 1991 . № 2213-I « ».
7. 25 2008 . « , , ».
Source: https://habr.com/ru/post/288400/
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