Maintaining good industrial relations

IP is a valuable asset. Most important inventions are developed and subject to patent protection by companies. The companies hire engineers and workers who invent in the course of their work either on their own initiative or after receiving a specific assignment from their superiors.

In any case, it is important to build relations between the company and the employee in such a way that both sides will be satisfied and no unexpected outcomes should occur.

It is also essential to meet all statutory laws and regulations applying to the relationship between the employer and the inventor employee.

Nature of employee invention

The Russian Civil Code provides for the following criteria to qualify as activity that counts as an employee invention:

The invention is created by the employee in the framework of labour duties, which normally are stipulated in the employment contract and job description, or is a result of performance of a specific task entrusted to the employee by the employer;

Only the employee who makes a creative input is considered as an inventor. Other employees involved in rendering solely supportive functions, eg, assistants, secretaries, managers, shall not normally be recognised as the inventors; and

Such criteria as the employer’s assets and property (materials, laboratories, equipment) used by the employee-inventor to create the invention are not usually considered as the binding evidence of the employee invention.

The court practice in this regard is quite stable and unified. It spells out that labour obligations in the contract need not contain specific instructions to invent. It is sufficient to indicate a general scope of work responsibilities for the employee. (СИП-121/2014; 818/2014).

Protecting the right to an employee invention

The right to obtain a patent for an employee invention shall belong to the employer unless the employer and employee agree otherwise. Unlike in some other countries, the right transfers to the employer automatically once the employee notifies the employer on the invention made in the frame of labour duties. Notification to the employer is not goodwill of the employee, it is the employee’s responsibility directly written down in the law.

At the same time, the employer shall take one of the following decisions to retain the right to employee inventions, notably: (a) to file a patent application with the authority; (b) transfer the right to file a patent application to a third party; or (c) keep the employee invention secret.

Those rules are imperative and cannot be modified by the labour contract or other kind of agreement between the employee and the employer.

Should the employer fail to take any of the three abovementioned actions within four months, the right to the employee invention would automatically revert to the employee inventor.

Consequently, to mitigate the risk of losing the right to the invention, it is advisable to: (a) remind the employee inventors of their duties to notify the employer once they make an invention; (b) monitor the activity of the employee inventors; and (c) make sure that the said three actions are taken with regard to the invention within four months.

Court practice shows how important the employee’s notification on invention of the IP could be.