In some cases, as a result of their work activities, employees create inventions that are subsequently used by the employee and employer in production. The creation of such service inventions entails the emergence of corresponding rights for the employee and employer. What rights do the employee and employer have? Who owns the right to an invention if such legal relations are not regulated by an employment contract? Is it possible to include conditions for the use of a service invention in an already concluded employment contract?
What is a service invention?
Service inventions are those created by the creative work of employees, civil servants (including military personnel, employees of internal affairs agencies and national security agencies) in the process of performing their official and work duties, as well as tasks of a production, scientific research, artistic and graphic and other nature received by the employee from the employer (Clause 2 of the Regulation on service inventions, utility models and industrial designs created in the Republic of Kazakhsta ).
What rights do employees and employers have when creating a service invention?
When creating a service invention, the employee and the employer acquire both the right of authorship to the service invention and the exclusive right to the invention as an object of industrial property.
Thus, in accordance with paragraph 3 of Article 9 of the Patent Law of the Republic of Kazakhstan, the right of authorship is an inalienable personal right and is protected in perpetuity.
The exclusive right in accordance with paragraph 1) of Article 1 of the Patent Law is the property right of the patent holder to use the industrial property object in any way at his own discretion. In such a case, the patent holder may be either the author of the invention or the employer, if the conditions for the emergence of the exclusive right to the invention and obtaining a patent are regulated by an employment contract.
Thus, both the employee and the employer, in the event of an agreement reached by the parties, acquire rights to a service invention created as a result of work activity.
Employee rights to a service invention
The employee has an inalienable personal right of authorship, protected in perpetuity, regardless of the presence or absence of ownership of the service invention (Clause 5 of the Regulation).
Clause 2 of Article 9 of the Patent Law of the Republic of Kazakhstan establishes that if several individuals participated in the creation of an industrial property object, then all of them are considered its authors (co-authors).
If the right of authorship is not a property right, such a right cannot be renounced. That is, once it has arisen, such a right remains with the author indefinitely.
Thus, the employee has the right of authorship to service inventions regardless of the presence or absence of property rights assigned to him.
Employer's rights to a service invention
The right to obtain a preliminary patent and a patent for an invention, industrial design or utility model created by an employee in connection with the performance of his official duties or carried out by the employee using technical knowledge or means that are specific to the enterprise belongs to the employer if the transfer of rights to them is provided for in the employment contract (clause 1 of the Regulation).
That is, the exclusive right to a service invention belongs to the employer only if the employment contract between the employee and the employer contains such conditions.
Thus, the fact of creating a service invention at the request of the employer in the absence of information in the contract about the transfer by the employee to the employer of rights to the service invention excludes the emergence of the employer's property right to such an invention.
Who owns the right to an invention if such legal relations are not regulated by an employment contract?
In the event that the employment contract or a separate agreement supplementing this contract does not contain conditions concerning the rights of the parties with respect to service inventions, the right to obtain a preliminary patent and a patent for inventions created by the employee during the period of employment with the employer belongs to the employee (Clause 7 of the Regulation).
That is, all rights to inventions created by an employee in the absence of information in the employment contract about the emergence of such a right by the employer or before receiving the employer’s proposal to include the relevant additional conditions in the employment contract belong to the employee.
Is it possible to include conditions for the use of a service invention in an already concluded employment contract?
The requirement to include in the employment contract the conditions for the use of a service invention or to conclude a separate agreement on them, supplementing the contract, may come from either the employee or the employer.
In the event that the employer has proposed to include in a previously concluded employment contract the relevant additional conditions concerning the rights of the parties with respect to official inventions, and the employee has refused the said proposal, such refusal may serve as grounds for the employer to apply disciplinary measures to the employee, as provided for by law and internal work regulations, including termination of the employment contract (Clause 8 of the Regulation).
Thus, the current legislation provides for the possibility of making changes or additions to an already concluded contract with conditions concerning the rights of the employee and the employer with respect to a service invention, and also prevents the employee from refusing the employer’s offer to make the specified changes to the concluded employment contract.