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Articles

The inventions, utility models and industrial designs created under a state contract

April 23,2019

Every day more and more different technical solutions such as inventions, utility models and industrial designs are created under a state or municipal contract, for which reason a number of questions arises, for example, what rights are and whom they belong to in this case, what the author can expect – he is the very worker of the created invention, utility model, or industrial design?

In order to find the answers to the questions set forth, let us turn to the legislation and find out what Article 1373 of the Civil Code of the Russian Federation says to us in this respect.

So, according to the said Article:

1. The right to obtain a patent and an exclusive right to an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs shall belong to the organization carrying out the state or municipal contract (a contractor), unless the state or municipal contract stipulates that this right belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity on behalf of which the state or municipal customer is acting, or to the contractor and the Russian Federation jointly, to the contractor and a subject of the Russian Federation, or to the contractor and a municipal entity.

2. If, in accordance with a state or municipal contract, the right to obtain a patent and an exclusive right to an invention, utility model or industrial design belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity, then the state or municipal customer may file an application for issuing the patent within six months from the date of the notification by him/it in a written form of the contractor on obtaining the intellectual activity result that is capable of being entitled to the legal protection as an invention, utility model or industrial design. If within the said period, the state or municipal customer fails to file the application, the right to obtain the patent shall belong to the contractor.

3. If the right to obtain a patent and an exclusive right to an invention, utility model or industrial design on the basis of a state or municipal contract belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity, the contractor shall be obliged, by way of concluding the appropriate agreements with the own employees and third parties, to obtain all rights or to ensure their obtaining for transferring, correspondingly, to the Russian Federation, the subject of the Russian Federation and the municipal entity. In this case, the contractor shall be entitled to reimbursement of the expenses incurred by him/it in connection with the acquisition of the relevant rights from the third parties.

4. If the patent for an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs belongs in accordance with Paragraph 1 of this Article not to the Russian Federation, not to a subject of the Russian Federation or not to a municipal entity, the patent holder upon the request of the state or municipal customer shall be obliged to grant to the person indicated by him/it a gratuitous simple (non-exclusive) license to the use of the invention, utility model or industrial design for the state or municipal needs.

5. If the patent for an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs is obtained jointly to the name of the contractor and the Russian Federation, the contractor and a subject of the Russian Federation, or the contractor and a municipal entity, the state or the municipal customer shall be entitled to grant a gratuitous simple (non-exclusive) license to the use of such invention, utility model or industrial design for the purposes of carrying out the works or supplying the products for the state or municipal needs, having notified the contractor on this.

6. If the contractor, who has obtained a patent for an invention, utility model or industrial design in accordance with Paragraph 1 of this Article to his/its name makes a decision on an early termination of the patent, he/it shall be obliged to notify the state or municipal customer on this and upon his/its request to transfer the patent on a gratuitous basis to the Russian Federation, the subject of the Russian Federation or the municipal entity.

In the case of the decision made on the early termination of the patent obtained in accordance with Paragraph 1 of this Article to the name of the Russian Federation, a subject of the Russian Federation or a municipal entity, the state or municipal customer shall be obliged to notify the contractor on this and, upon his/its request, to send him/it the patent on a gratuitous basis.

7. The author of the invention, utility model or industrial design indicated in Paragraph 1 of this Article, who is not a patent holder, shall be paid remuneration in accordance with Paragraph 4 of Article 1370 of this Code.

Paragraph 7 of the Article contains the very important information that defends the interests of the authors, who have participated in carrying out the contractual works due to their employment duties. As in the case of carrying out other customized developments, the employer shall be obliged to pay the author’s remuneration regardless of the fact who will obtain the patent for the relevant inventions, utility models or industrial designs.

The urgency of the problem for allocating the rights to the results of scientific and technical activity created at the expense of the state funds is connected with the need to attract investments in high-tech manufacture, in which the state is interested. The rate of embracing new technologies depends directly on the interest of both the investor and the developers in the rights to the technologies obtained. Therefore, it is necessary to distinguish clearly between the rights of the state to the results of scientific and technical activity financed from the state budget, and the rights of the contractors of such works taking into account the need to encourage enterprises and their employees to innovative activity.

Thus, it is necessary to make changes to the current legislation in the field of the protection and use of inventions, utility models, industrial designs created with the participation of the state, the purpose of which is to ensure the equal rights and observance of the interests of all participants of the legal relations for the creation of the results capable of being entitled to the legal protection that have been obtained at the expense of the budget funds.

Автор материала

Olga Dolgikh
Head of Department / Patent Attorney/ Mechanics Engineer