Protecting employees’ inventions

According to Romania’s Law on Employees’ Inventions No. 83/2014, applicable since June 29, 2014, inventions can be classified as follows: free inventions, which fall under the scope of the Romanian Patent Law No. 64/1991, and employee inventions, which fall under the scope of the 83/2014 law.

The new law regarding employee inventions provides for the first time the definition of the term ‘employee’: “Any natural person who, based on an individual employment contract, renders a remunerated activity for a person of public or private law under the authority of such person.”

The new law’s provisions are applicable to inventions which may gain patent or utility model protection in Romania or in any jurisdiction.

The objective of the new law regarding employee inventions is to encourage and develop new technology and industry through inventions created by individuals employed by private or public entities in Romania.

It is sufficient to have only one inventor employed and the invention could be considered under the provisions of the new law regarding employee inventions.

Classification

Employee inventions are classified as follows:

• Employee inventions created under a specific binding employment contract provision—inventive mission. The inventive mission shall be the object of a distinct clause of the contract, which explicitly establishes the technical field, the technical problem, or problems which the employee commits him/herself to solve by involving a creative contribution corresponding to his/her position; or

• Employee inventions without inventive mission, created during an individual general employment contract.

The employer is competent by law to decide whether an invention with inventive mission or without inventive mission but created under the following criteria (cumulatively) should be subject of the new law:

• During the employment contract, as well as within two years from termination thereof;

• Having knowledge of or using the employer’s expertise and the employer’s means; and

• Following the professional training earned by the inventor due to the employer’s care and expenses, or by using the information resulting from the employer’s activity or made available by the employer.

In general, the right to an invention without inventive mission may be claimed within a minimum period of four months from the date when the employer was informed about the new invention and if no extended term is provided by the internal regulations of the company.

As a general rule, the right to inventions with inventive mission by law belong to the employer, regardless of whether such employer is a public or private entity.

Inventors’ rights

The rights to an invention belong to the employee under the Law on Employees’ Inventions in the following cases:

• The invention was not claimed by the employer;

• The invention is released by the employer; and

• The invention is a free invention.

If right to an invention has been claimed by the employer, then the inventor is entitled to remuneration.

When the invention, irrespective of whether it is a free invention or an employee invention (with or without inventive mission), is created by Romanian native workers in Romanian territory, there is the obligation of first filing of the patent/utility model application for that invention with the Romanian State Office for Inventions and Trademarks (OSIM).

The employee and the employer have a reciprocal obligation to inform each other in writing regarding the creation of an invention, the stage of its implementation and the filing of the patent/utility model application.

Employers’ rights

When the employer is entitled to the invention, it is entitled either to file the corresponding application, or to transfer the rights to the invention to a third party, or to keep the invention.

The inventor should be informed regarding the filing of the application with the OSIM and/or with any relevant foreign authority, as well as the status of proceedings after filing.

The employee-inventor has the right to be granted a duplicate of the Romanian patent.

If the employer, after filing the corresponding patent/utility model application, decides not to continue the application in Romania and/or abroad, and if not otherwise agreed by both parties, the employee-inventor may receive the rights to be granted protection, provided that the employer receives a non-exclusive licence to the patented invention.

"The inventor should be informed regarding the filing of the application with the OSIM and/or with any relevant foreign authority, as well as the status of proceedings after filing."

If the employer is not interested in seeking protection for the invention abroad, the employee-inventor should be duly informed. The inventor may ask for transmission of the rights to seek protection for said invention abroad, including transmission of the right to claim priority.

The employer and the employee-inventor must both fulfil the obligations of non-disclosure.

Criteria for remuneration

Remuneration is at the discretion of the employer, although some general considerations may be noted:

• The employer may set, according to the company policy, the general rules applicable for rewarding the employees who are reporting their inventions;

• The effects of invention exploitation—technical, economic, commercial or social—irrespective of the place of exploitation, should be taken into account;

• The ratio of the inventor/employer contribution to the invention; and

• The personal contribution of the inventor to the invention, in case of multiple inventors.

There are special provisions on public research and development (R&D). The employee-inventor of a public R&D company, whose invention was claimed by the employer, and in case the invention was turned to profit, has the benefit of a portion of at least 30% of the income made by the employer on the invention.

Legal remedies

The decision of the employer regarding classification of the invention as an employee invention or not may be challenged by the inventor. The term for filing the court action is four months from the date it was informed about the classification of the invention.

All disputes under Romanian law regarding employees’ inventions should be brought to court.

Failure to comply with the obligations arising from the law may entail tort civil liability and/or criminal liability for the person liable for infringing the respective legal provisions.

Law enforcement

The number of patent/utility model application filings with the OSIM increased by about 16% after enforcement of the new law regarding employees’ inventions.

Employers should carefully review employment contracts to meet the new specific law provisions.

It is advisable to enter special provisions into employment contracts on confidentiality obligations relating to inventions created by the employees.

Liability in cases of invention disclosure should be clearly stipulated in the employment contract.

Also, it is advisable to add special employment contract provisions if the employee invention would be classified by the employer as a trade secret.

The obligation of first filing in Romania of all inventions created by Romanian nationals in Romanian territory should be fulfilled. n

Cosmina Fierscu is head of the patent department at  Rominvent. She is a chartered Romanian and European patent attorney, and is experienced in drafting and prosecuting patent applications, with expertise in matters relating to employee inventions. She can be contacted at: cfierascu@rominvent.ro