Service invention in the light of legislative innovations of 2014
The most important thing about what has changed in the legislation regarding service inventions and what it means for the employer.
The situation with official inventions was discussed in some detail in the publication Employer on Service Invention . Changes in the fourth part of the Civil Code of the Russian Federation as amended by federal law of 12.03.2014 No. 35-FZ, enacted on 10/01/2014, and the adoption of the Resolution of the Government of the Russian Federation of 04.06.2014 No. 512 “On approval of the Rules for paying remuneration for service inventions, service models, service industrial designs ", coming into effect on 10/01/2014, affect the legal status of the service invention and, undoubtedly, will affect the law enforcement practice relating to service inventions and inventions that are not service, but constitute limited cases, including inventions created during the performance of work under the contract.
1. General legal regime of service inventions
Clause 3 of Article 1370 of the Civil Code of the Russian Federation is set out in the new edition:
The exclusive right to a service invention, a service utility model or a service industrial design and the right to obtain a patent belong to the employer, unless otherwise provided by the employment or civil law contract between the employee and the employer.
At this point, attention should be paid to the fact that in the previous edition this provision contained an indication of a labor or other contract between an employee and an employer, which made it possible to include provisions for a service invention in a collective agreement (Article 40 of the Labor Code of the Russian Federation). According to the new edition, the provisions on the service invention should be included only in individual contracts.
')
Clause 4 of Article 1370 of the Civil Code of the Russian Federation introduced a new paragraph defining the rights of the heirs of the inventor:
The right to remuneration for a service invention, a service utility model or a service industrial design is inalienable, but passes to the author’s heirs for the remainder of the exclusive right.
The author cannot transfer his right to remuneration to anyone, but his heirs may use this right until the patent expires.
Since an alternative to patenting an invention is to keep it secret, in particular, in the production secret (know-how) mode, attention should also be paid to the amendment of article 1465 of the Civil Code of the Russian Federation, which specifies measures to respect the confidentiality of the production secret:
1. The secret of production (know-how) is information of any nature (production, technical, economic, organizational and others) about the results of intellectual activity in the scientific and technical sphere and about the ways of carrying out professional activities that have real or potential commercial value due to their third persons, if such information from third parties does not have free access on a legal basis and the holder of such information takes reasonable measures to respect their confidentiality. dentsialnosti, including by introducing a regime of commercial secrets.
2. The secret of the proceedings may not be considered information, the obligatory disclosure of which or the inadmissibility of restricting access to which is established by law or other legal act.
Previously, legislation indicated the need to introduce a trade secret regime to protect production secrets. The new edition of Article 1465 of the Civil Code of the Russian Federation regards a trade secret regime only as one of the reasonable measures that the owner of the production secret can choose to maintain confidentiality. This significantly expands the arsenal of measures of a technical, organizational and legal nature, which in the event of a dispute between the author of the invention and his employer regarding the author’s right to independent patenting and use of the invention can be recognized by the court as sufficient to maintain confidentiality. Corresponding changes were also made to Federal Law No. 98-FZ of July 29, 2004 “On Commercial Secrets”.
2. Remuneration for service invention
Clause 1 of the Rules for the Payment of Remuneration for Service Inventions, Service Utility Models, Service Industrial Designs (hereinafter referred to as the Rules) defines the scope of the Rules:
These Rules establish the procedure for paying remuneration for service inventions, utility service models, and service industrial designs (hereinafter referred to as remuneration).
The effect of this Regulation does not apply to cases when an employer and an employee conclude a contract establishing the amount, conditions and procedure for paying remuneration.
This paragraph of the Rules establishes the subsidiary nature of their actions, i.e. establishes the priority of the terms of the contract between the employee and the employer in relation to remuneration for the service invention.
Paragraph 2 of the Rules determines the amount and term of payment of remuneration for the creation of a service invention:
For the creation of a service invention, a service utility model, a service industrial design, the remuneration should be 30 percent of the average salary of an employee who is the author of a service invention for the last 12 calendar months and 20 percent of the average salary of an employee who is the author of a service utility model over the past 12 calendar months, which is calculated on the date the employer filed an application for obtaining a patent for such an invention, a useful fashion s, industrial design, or of the date of their decision to keep the information about them in secret, either on the day on which the employer the right to obtain a patent to another person.
This payment, depending on the grounds for the employee’s right to remuneration, is made by the employer at the same time not later than 2 months from the day the employer received a patent for a service invention, a service utility model, a service industrial design, or from the day it decided to keep information about them secretly or from the date of the transfer by the employer of the right to obtain a patent to another person, or no later than 18 months from the date of filing the application for obtaining a patent for such an invention, utility model, industrial lenny sample if the employer has not obtained a patent on the application filed by him for reasons beyond his control.
The previously adopted procedure established by the Resolution of the Council of Ministers - Government of the Russian Federation of August 14, 1993 No. 822 “On the Procedure for Applying in the Russian Federation of Some Provisions of the Legislation of the Former USSR on Inventions and Industrial Designs” and the Law of the USSR of May 31, 1991 No. 2213 -I “On Inventions in the USSR” determined the minimum amount of remuneration equal to 15 percent of the profit (the corresponding part of the income) received annually by the patent owner-employer from using the invention, or at least e than 2 percent of the share 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). We must assume that shamanism with the determination of the amount of profit and manipulation of the cost in determining the amount of remuneration in the past. The government unequivocally tied the amount of remuneration to the average wage of the worker, prompting the latter to think once again about the fairness of the world order. And this is true both for companies with a “black” or “dark gray” salary, and for “white” companies, for 30% of the salary of a “junior developer” is not the same as 30% of the salary of “SEO”.
Since the Rules do not specifically specify for which patents the Rules apply, it can be assumed that a government means a patent of any state or an international patent (for example, European or Eurasian) and the obligation to pay remuneration arises in connection with patent applications or patents in all countries. That is, when patenting an invention in twenty to thirty countries with the most developed markets (a typical case for IT, telecom or FMCG), the total reward for creating a service invention will not be so small. However, as they say, law enforcement practice will show.
It should be noted that the Rules provide a one-time reward for the creation of a service invention. In my opinion, the balance of the interests of the employer and the employee largely corresponds to a two-step scheme for paying remuneration for creating a service invention, in which the first part of the remuneration is paid for a certain period (for example, one month) after filing an application for an invention (utility model) or after transfer the employer of the right to obtain a patent to another person, and the second part - within a certain period (for example, one month) after receiving the patent or refusing to issue a patent or knowledge of the application withdrawn for reasons dependent on the employer.
Such a scheme makes it possible to more equitably share the risks of the author of the service invention and his employer and at the same time increase the interest of authors in inventive activity, since they will get the first financial result much faster than if they link the entire payment to obtaining a patent or refusing to issue a patent, because the review procedure A patent application usually lasts from one to five years.
At the same time, the first part of the remuneration may be less and even significantly less than the second; this allows reducing employer risks associated with the non-patentability of the invention, including the quality of the patented technical solution itself, which may be completely unobvious for the employer at the time of making the decision on patenting.
Paragraph 3 of the Rules determines the amount and term of payment of remuneration for the use of a service invention:
An employer’s use of a service invention, a service utility model, a service industrial design is paid to the employee, who is the author, in the amount of his average salary for the last 12 calendar months, in which such invention, utility model, industrial design was used.
Remuneration is paid within a month after the expiration of every 12 calendar months in which such an invention, utility model, industrial design was used.
The use of the invention or utility model is determined in accordance with paragraph 3 of Article 1358 of the Civil Code of the Russian Federation. In this case, the dependence of inventions should be taken into account, when the use of the first invention automatically means the use of the second invention, on which the first invention depends (clause 4 of Article 1358 of the Civil Code of the Russian Federation). Remuneration is paid for the use of each invention in a chain of dependent inventions.
Paragraph 4 of the Rules defines the amount and term of payment of remuneration in case of granting a license to use a service invention to third parties:
If an employer grants another person the right to use a service invention, utility service model, or a service industrial design, under a licensing agreement, the employee, who is the author, is paid a remuneration of 10 percent of the amount due to the licensing remuneration agreement.
The remuneration of an employee who is the author of such an invention, utility model, industrial design is paid by the employer within one month from the date of receipt of remuneration stipulated in the license agreement, or part of such remuneration if the license agreement provides for payment in the form of fixed one-time or periodic payments, percentage deductions from income (revenue) or in some other form.
Note that the remuneration for the service invention is paid from each license agreement, and, apparently, pertaining to each patent in each country or group of countries.
Paragraph 5 of the Rules defines the amount and term of payment of remuneration in the event of alienation of a patent to a third party or the right to receive a patent for a service invention:
In the event that the employer transfers to another person the right to receive a patent or exclusive right to a service invention, a service utility model, a service industrial design under an agreement on the transfer of the right to receive a patent or an agreement on the alienation of an exclusive right to an employee who is the author of such an invention, utility model, industrial design , remuneration is paid in the amount of 15 percent of the remuneration provided for in the contract within a month from the date of receipt by the employer of the specified remuneration I.
Paragraph 6 of the Rules governs the distribution of remuneration for service invention among authors in the case of licensing or selling a patent:
If the service invention, service utility model, service industrial design were created by joint creative work of several workers who are co-authors of such invention, utility model, industrial design, the remuneration in cases provided for in paragraphs 4 and 5 of this Regulation is equally distributed among them. agreement between such workers does not provide otherwise.
It should be noted here that clauses 5 and 6 of the Rules imply that the obligation to pay remuneration to the author of an official invention in the case of granting a license or alienation of a patent to third parties or the right to receive a patent remains with the employer when the payments of third parties to the employer are distributed over time. However, it can be assumed that this does not mean that the obligation to pay remuneration to the author of the service invention in these cases cannot be transferred by the employer to the acquirer of the license or patent or the right to receive a patent under an agreement with such acquirer. This is indicated by the subsidiary nature of the Rules.
Paragraph 7 of the Rules defines the obligation of the employer to pay remuneration for the service invention after the employee’s dismissal:
In case of termination of the employment relationship between the employee who is the author of the service invention, the service utility model, the service industrial design, and the employer, the employer's obligation to pay the remuneration remains.
Even if the dismissal of an employee is “unfriendly”, it makes sense to agree on a way to contact him so that you do not have to desperately search for him somewhere in the Valley or in Bali to pay the remuneration due to him. And in the light of the already mentioned clause 4 of Article 1370 of the Civil Code of the Russian Federation, it also makes sense to ask about the coordinates of his potential heirs.
We also note that from clause 5 of article 1246 of the Civil Code of the Russian Federation, the new version excludes the definition of minimum terms for remuneration rates and gives a direct reference to the application of these rules only in the absence of an agreement between the employee and the employer:
The government of the Russian Federation has the right to set rates, the procedure and terms for paying remuneration for service inventions, service utility models, service industrial designs. These rates, procedure and terms apply if the employer and the employee have not entered into an agreement establishing the size, conditions and procedure for paying remuneration for the service invention, the utility service model, the service industrial design.
This, according to experts , indicates that the legislator departs from the concept of minimum rates and encourages the parties to determine their rights and obligations in accordance with the freedom of contract.
3. Conclusion
The law on remuneration for service invention is still a lot of holes. Take, for example, a situation where an invention created in Russia in the form of a patent application at a symbolic price is alienated to an affiliate somewhere in the British Virgin Islands or in Amsterdam, with this symbolic price, remuneration is paid for the service invention, and then all patenting, use, resale or licensing of the invention is carried out by this affiliate and the authors have nothing to do with it. Although, in my opinion, when drawing up a contract with the authors of the invention, it is still more far-sighted to adhere to the win-win strategy, and not to exploit holes in the laws.
Practice shows that even a thin world is better than a good quarrel and it is advisable to attend to the proper contractual arrangement of the relationship of the future patent owner (employer) and the inventors before relying on the fairness of the court in the future. The contract may contain the conditions most suitable for each specific case, and the conditions for the author may be formally better or worse than those provided for by the Rules. , , , , .., . , , due diligence .
The situation with official inventions was discussed in some detail in the publication Employer on Service Invention . Changes in the fourth part of the Civil Code of the Russian Federation as amended by federal law of 12.03.2014 No. 35-FZ, enacted on 10/01/2014, and the adoption of the Resolution of the Government of the Russian Federation of 04.06.2014 No. 512 “On approval of the Rules for paying remuneration for service inventions, service models, service industrial designs ", coming into effect on 10/01/2014, affect the legal status of the service invention and, undoubtedly, will affect the law enforcement practice relating to service inventions and inventions that are not service, but constitute limited cases, including inventions created during the performance of work under the contract.
1. General legal regime of service inventions
Clause 3 of Article 1370 of the Civil Code of the Russian Federation is set out in the new edition:
The exclusive right to a service invention, a service utility model or a service industrial design and the right to obtain a patent belong to the employer, unless otherwise provided by the employment or civil law contract between the employee and the employer.
At this point, attention should be paid to the fact that in the previous edition this provision contained an indication of a labor or other contract between an employee and an employer, which made it possible to include provisions for a service invention in a collective agreement (Article 40 of the Labor Code of the Russian Federation). According to the new edition, the provisions on the service invention should be included only in individual contracts.
')
Clause 4 of Article 1370 of the Civil Code of the Russian Federation introduced a new paragraph defining the rights of the heirs of the inventor:
The right to remuneration for a service invention, a service utility model or a service industrial design is inalienable, but passes to the author’s heirs for the remainder of the exclusive right.
The author cannot transfer his right to remuneration to anyone, but his heirs may use this right until the patent expires.
Since an alternative to patenting an invention is to keep it secret, in particular, in the production secret (know-how) mode, attention should also be paid to the amendment of article 1465 of the Civil Code of the Russian Federation, which specifies measures to respect the confidentiality of the production secret:
1. The secret of production (know-how) is information of any nature (production, technical, economic, organizational and others) about the results of intellectual activity in the scientific and technical sphere and about the ways of carrying out professional activities that have real or potential commercial value due to their third persons, if such information from third parties does not have free access on a legal basis and the holder of such information takes reasonable measures to respect their confidentiality. dentsialnosti, including by introducing a regime of commercial secrets.
2. The secret of the proceedings may not be considered information, the obligatory disclosure of which or the inadmissibility of restricting access to which is established by law or other legal act.
Previously, legislation indicated the need to introduce a trade secret regime to protect production secrets. The new edition of Article 1465 of the Civil Code of the Russian Federation regards a trade secret regime only as one of the reasonable measures that the owner of the production secret can choose to maintain confidentiality. This significantly expands the arsenal of measures of a technical, organizational and legal nature, which in the event of a dispute between the author of the invention and his employer regarding the author’s right to independent patenting and use of the invention can be recognized by the court as sufficient to maintain confidentiality. Corresponding changes were also made to Federal Law No. 98-FZ of July 29, 2004 “On Commercial Secrets”.
2. Remuneration for service invention
Clause 1 of the Rules for the Payment of Remuneration for Service Inventions, Service Utility Models, Service Industrial Designs (hereinafter referred to as the Rules) defines the scope of the Rules:
These Rules establish the procedure for paying remuneration for service inventions, utility service models, and service industrial designs (hereinafter referred to as remuneration).
The effect of this Regulation does not apply to cases when an employer and an employee conclude a contract establishing the amount, conditions and procedure for paying remuneration.
This paragraph of the Rules establishes the subsidiary nature of their actions, i.e. establishes the priority of the terms of the contract between the employee and the employer in relation to remuneration for the service invention.
Paragraph 2 of the Rules determines the amount and term of payment of remuneration for the creation of a service invention:
For the creation of a service invention, a service utility model, a service industrial design, the remuneration should be 30 percent of the average salary of an employee who is the author of a service invention for the last 12 calendar months and 20 percent of the average salary of an employee who is the author of a service utility model over the past 12 calendar months, which is calculated on the date the employer filed an application for obtaining a patent for such an invention, a useful fashion s, industrial design, or of the date of their decision to keep the information about them in secret, either on the day on which the employer the right to obtain a patent to another person.
This payment, depending on the grounds for the employee’s right to remuneration, is made by the employer at the same time not later than 2 months from the day the employer received a patent for a service invention, a service utility model, a service industrial design, or from the day it decided to keep information about them secretly or from the date of the transfer by the employer of the right to obtain a patent to another person, or no later than 18 months from the date of filing the application for obtaining a patent for such an invention, utility model, industrial lenny sample if the employer has not obtained a patent on the application filed by him for reasons beyond his control.
The previously adopted procedure established by the Resolution of the Council of Ministers - Government of the Russian Federation of August 14, 1993 No. 822 “On the Procedure for Applying in the Russian Federation of Some Provisions of the Legislation of the Former USSR on Inventions and Industrial Designs” and the Law of the USSR of May 31, 1991 No. 2213 -I “On Inventions in the USSR” determined the minimum amount of remuneration equal to 15 percent of the profit (the corresponding part of the income) received annually by the patent owner-employer from using the invention, or at least e than 2 percent of the share 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). We must assume that shamanism with the determination of the amount of profit and manipulation of the cost in determining the amount of remuneration in the past. The government unequivocally tied the amount of remuneration to the average wage of the worker, prompting the latter to think once again about the fairness of the world order. And this is true both for companies with a “black” or “dark gray” salary, and for “white” companies, for 30% of the salary of a “junior developer” is not the same as 30% of the salary of “SEO”.
Since the Rules do not specifically specify for which patents the Rules apply, it can be assumed that a government means a patent of any state or an international patent (for example, European or Eurasian) and the obligation to pay remuneration arises in connection with patent applications or patents in all countries. That is, when patenting an invention in twenty to thirty countries with the most developed markets (a typical case for IT, telecom or FMCG), the total reward for creating a service invention will not be so small. However, as they say, law enforcement practice will show.
It should be noted that the Rules provide a one-time reward for the creation of a service invention. In my opinion, the balance of the interests of the employer and the employee largely corresponds to a two-step scheme for paying remuneration for creating a service invention, in which the first part of the remuneration is paid for a certain period (for example, one month) after filing an application for an invention (utility model) or after transfer the employer of the right to obtain a patent to another person, and the second part - within a certain period (for example, one month) after receiving the patent or refusing to issue a patent or knowledge of the application withdrawn for reasons dependent on the employer.
Such a scheme makes it possible to more equitably share the risks of the author of the service invention and his employer and at the same time increase the interest of authors in inventive activity, since they will get the first financial result much faster than if they link the entire payment to obtaining a patent or refusing to issue a patent, because the review procedure A patent application usually lasts from one to five years.
At the same time, the first part of the remuneration may be less and even significantly less than the second; this allows reducing employer risks associated with the non-patentability of the invention, including the quality of the patented technical solution itself, which may be completely unobvious for the employer at the time of making the decision on patenting.
Paragraph 3 of the Rules determines the amount and term of payment of remuneration for the use of a service invention:
An employer’s use of a service invention, a service utility model, a service industrial design is paid to the employee, who is the author, in the amount of his average salary for the last 12 calendar months, in which such invention, utility model, industrial design was used.
Remuneration is paid within a month after the expiration of every 12 calendar months in which such an invention, utility model, industrial design was used.
The use of the invention or utility model is determined in accordance with paragraph 3 of Article 1358 of the Civil Code of the Russian Federation. In this case, the dependence of inventions should be taken into account, when the use of the first invention automatically means the use of the second invention, on which the first invention depends (clause 4 of Article 1358 of the Civil Code of the Russian Federation). Remuneration is paid for the use of each invention in a chain of dependent inventions.
Paragraph 4 of the Rules defines the amount and term of payment of remuneration in case of granting a license to use a service invention to third parties:
If an employer grants another person the right to use a service invention, utility service model, or a service industrial design, under a licensing agreement, the employee, who is the author, is paid a remuneration of 10 percent of the amount due to the licensing remuneration agreement.
The remuneration of an employee who is the author of such an invention, utility model, industrial design is paid by the employer within one month from the date of receipt of remuneration stipulated in the license agreement, or part of such remuneration if the license agreement provides for payment in the form of fixed one-time or periodic payments, percentage deductions from income (revenue) or in some other form.
Note that the remuneration for the service invention is paid from each license agreement, and, apparently, pertaining to each patent in each country or group of countries.
Paragraph 5 of the Rules defines the amount and term of payment of remuneration in the event of alienation of a patent to a third party or the right to receive a patent for a service invention:
In the event that the employer transfers to another person the right to receive a patent or exclusive right to a service invention, a service utility model, a service industrial design under an agreement on the transfer of the right to receive a patent or an agreement on the alienation of an exclusive right to an employee who is the author of such an invention, utility model, industrial design , remuneration is paid in the amount of 15 percent of the remuneration provided for in the contract within a month from the date of receipt by the employer of the specified remuneration I.
Paragraph 6 of the Rules governs the distribution of remuneration for service invention among authors in the case of licensing or selling a patent:
If the service invention, service utility model, service industrial design were created by joint creative work of several workers who are co-authors of such invention, utility model, industrial design, the remuneration in cases provided for in paragraphs 4 and 5 of this Regulation is equally distributed among them. agreement between such workers does not provide otherwise.
It should be noted here that clauses 5 and 6 of the Rules imply that the obligation to pay remuneration to the author of an official invention in the case of granting a license or alienation of a patent to third parties or the right to receive a patent remains with the employer when the payments of third parties to the employer are distributed over time. However, it can be assumed that this does not mean that the obligation to pay remuneration to the author of the service invention in these cases cannot be transferred by the employer to the acquirer of the license or patent or the right to receive a patent under an agreement with such acquirer. This is indicated by the subsidiary nature of the Rules.
Paragraph 7 of the Rules defines the obligation of the employer to pay remuneration for the service invention after the employee’s dismissal:
In case of termination of the employment relationship between the employee who is the author of the service invention, the service utility model, the service industrial design, and the employer, the employer's obligation to pay the remuneration remains.
Even if the dismissal of an employee is “unfriendly”, it makes sense to agree on a way to contact him so that you do not have to desperately search for him somewhere in the Valley or in Bali to pay the remuneration due to him. And in the light of the already mentioned clause 4 of Article 1370 of the Civil Code of the Russian Federation, it also makes sense to ask about the coordinates of his potential heirs.
We also note that from clause 5 of article 1246 of the Civil Code of the Russian Federation, the new version excludes the definition of minimum terms for remuneration rates and gives a direct reference to the application of these rules only in the absence of an agreement between the employee and the employer:
The government of the Russian Federation has the right to set rates, the procedure and terms for paying remuneration for service inventions, service utility models, service industrial designs. These rates, procedure and terms apply if the employer and the employee have not entered into an agreement establishing the size, conditions and procedure for paying remuneration for the service invention, the utility service model, the service industrial design.
This, according to experts , indicates that the legislator departs from the concept of minimum rates and encourages the parties to determine their rights and obligations in accordance with the freedom of contract.
3. Conclusion
The law on remuneration for service invention is still a lot of holes. Take, for example, a situation where an invention created in Russia in the form of a patent application at a symbolic price is alienated to an affiliate somewhere in the British Virgin Islands or in Amsterdam, with this symbolic price, remuneration is paid for the service invention, and then all patenting, use, resale or licensing of the invention is carried out by this affiliate and the authors have nothing to do with it. Although, in my opinion, when drawing up a contract with the authors of the invention, it is still more far-sighted to adhere to the win-win strategy, and not to exploit holes in the laws.
Practice shows that even a thin world is better than a good quarrel and it is advisable to attend to the proper contractual arrangement of the relationship of the future patent owner (employer) and the inventors before relying on the fairness of the court in the future. The contract may contain the conditions most suitable for each specific case, and the conditions for the author may be formally better or worse than those provided for by the Rules. , , , , .., . , , due diligence .
Source: https://habr.com/ru/post/288420/
All Articles