The new law of employee inventions

In order to fall within the provisions of this law, there must be at least one inventor in the inventors’ team who is an employee of a juridical person who is either a public or a private employer. For simplicity, throughout the article the wording “inventor” stands for one or several employee inventor(s).

Definition

To qualify as an “employee invention”, one of the two situations below should apply:

a) The invention is created by the inventor during his activities incumbent on him on the basis of a form of contractual agreement with the employer, where the contractual agreement includes an “inventive mission”; or

b) The invention is obtained during the term of employment that includes a period of up to two years after the termination thereof, using the knowledge and the experience of the employer, following the professional training of the employee who was paid and cared for by the employer.

Rights and free inventions

The default provision is that the right over the invention belongs to the employer in case a), except for situations that were clearly agreed upon beforehand. In the case that the employer is a public juridical person operating in the field of research and development, the invention always belongs to the employer.

In case b), the right belongs to the employer, in the case that he claims this right within the term prescribed (four months); if that is not the case, the invention is released to the inventors.

All other inventions that do not fall within the situations above are free inventions to be filed by the inventors.

Obligations of the parties

The inventor must “immediately” communicate the invention to the employer in a clear manner.

The employer has a term of up to four months from the communication, or a term stated in the internal rules of the company, whichever is longer, to inform the inventor that the invention is considered to fall within the category of service invention (or not) and, if so, to claim the right thereof.

When the right belongs to the employer, he has the right to file a patent application or a utility model application in Romania and abroad, claiming priority from the Romanian application.

He has the duty to inform the inventor about the progress of the procedures for obtaining patent/utility model protection, whereas the inventor has the duty to assist the employer-applicant in his effort to obtain protection and to work the invention.

"In the case that the employer is a public juridical person operating in the field of research and development, the invention always belongs to the employer."

Should the employer decide that continuation of the prosecution procedures is no longer of interest to him for states other than Romania, he must assign the invention to the inventor under the condition that the latter shall give the employer a non-exclusive licence.

When the right belongs to the employee, he has the duty to inform in writing the employer about the progress of the procedures for obtaining protection.

Financial compensation

The law does not provide any specific compensation for inventions created by the employee whose contractual agreement includes “inventive mission”—case a).

For inventions made during the term of employment—case b), the employer shall set the criteria for calculating the compensation taking into account the economic effects of the invention, the degree to which the employer is involved in the actual realisation of the invention, including the means that he uses for this purpose and the contribution of the inventor within the team.

When the employer-proprietor is a research and development public juridical person, the inventor has the right to a percentage of at least 30% of the revenue obtained as a result of the working of the invention. This author is of the opinion that it is very difficult to separate the revenue generated by one invention from the revenue generated by another invention.

When the proprietor of rights is a university, at the request of the inventor the university must grant him free of charge the right to work the invention under a non-exclusive licence agreement, even if the inventor is not an employee. The duration of the agreement shall be equal to the term of the research contract.

Raluca Vasilescu is patent and trademark attorney, partner and deputy manager at Cabinet Opriou. She can be contacted at: raluca@oproiu.ro