Head of Department / Patent Attorney / Mechanics Engineer
Author and co-author of invention and utility model: how are the rights between them regulated?
Not a single result of intellectual activity in the world, such as an invention or utility model, can be created without the participation of the author. From the point of view of patent law, the author of an invention or utility model is a citizen whose work created the corresponding result of intellectual activity. The person indicated as the author in an application for a patent for an invention, utility model is considered the author of the invention, utility model, unless otherwise proven. Thus, from this definition it follows that only a physical person can be an author. Our clients very often ask us the following question: “Can a company be the author of an invention?” The answer is unequivocal - no.
It happens that not one person worked on the development, creation of a specific invention, but several - a group of people. According to the patent law, citizens who have created an invention, a useful model by joint creative work, are recognized as co-authors.
It should be noted that, according to Article 1228 of the Civil Code of the Russian Federation, citizens who have not made a personal creative contribution to the creation of such a result, including those who provided its author with only technical, consulting, organizational or material assistance, or only contributed to the registration of rights, are not recognized as authors of the result of intellectual activity, as well as citizens who exercised control over the implementation of the relevant work.
Thus, the author of an invention, a utility model, can be indicated as one person or several who have made a personal creative contribution to the creation of the result of intellectual activity.
Let's consider what rights the author and co-authors have, as well as how the rights are regulated between him.
The author of the result of intellectual activity shall have the right of authorship, the right to a name and other personal non-property rights. Therefore, the author must be indicated as such in the application for an invention, utility model or industrial design. And what happens if the author is not indicated when submitting an application or an author is indicated who is not one? If such an error occurred by accident, then it is necessary to take all necessary actions and include the actual author in the application or exclude the one that is not. Patent law allows this to be done when certain documents are submitted to the patent office.
And what are the consequences if the application deliberately indicates an author who is not such or does not include an author who really is? Deliberately providing the patent office with incorrect information about the author can have serious legal consequences. In general, such action may be considered "fraud", making the patent vulnerable and leading to its revocation or invalidation.
The right of authorship, that is, the right to be recognized as the author of an invention, utility model or industrial design, is inalienable and non-transferable, including when transferring to another person or transferring to him the exclusive right to an invention, utility model or industrial design and when granting another person the right to use it. Waiver of this right is void.
Authorship and the name of the author are protected indefinitely.
The right to obtain a patent for an invention or utility model initially belongs to the author of the invention or utility model.
The right to obtain a patent for an invention, utility model may pass to another person (successor) or be transferred to him in cases and on the grounds established by law, including by way of universal succession, or under an agreement, including under an employment contract.
Each of the co-authors has the right to use the invention, utility model at their own discretion, unless otherwise provided by agreement between them.
Each of the co-authors has the right to independently take measures to protect their rights to an invention, utility model.
In the case when the exclusive right to the result of intellectual activity belongs to several persons jointly, each of the right holders may use such result at its own discretion, unless otherwise provided by an agreement between the right holders. The relationship of persons to whom the exclusive right belongs jointly shall be determined by an agreement between them.
The disposal of the exclusive right to the result of intellectual activity is carried out by the right holders jointly, unless otherwise provided by an agreement between the right holders.
Income from the joint use of the result of intellectual activity or from the joint disposal of the exclusive right to such result shall be distributed among all right holders in equal shares, unless otherwise provided by an agreement between them.
Disputes related to the protection of patent rights, in particular, disputes about the authorship of an invention, utility model, are considered by the court.
In conclusion, I would like to pay special attention to the authors of service inventions and utility models. An invention or a utility model created by an employee in connection with the performance of his/her job duties or a specific task of the employer are recognized as a service invention or a service utility model, respectively. The right of authorship for a service invention, service utility model belongs to the employee (author).
Not many authors know about this, but the Rules for the payment of remuneration for service inventions, service utility models, approved by Decree of the Government of the Russian Federation of November 16, 2020 N 1848, are applied in Russia. In accordance with these Rules, for the creation of a service invention, the employer pays an employee who is the author of such an invention a remuneration in the amount of 30% of his average salary, and for the creation of a service utility model - remuneration in the amount of 20% of his average salary.
In addition, the employee (author) is entitled to remuneration in the event that the employer uses a service invention, a service utility model. The amount of such remuneration is 3 average wages of the employee for the last 12 calendar months in which such an invention was used. For the use by the employer of an official utility model, the employee who is the author of the utility model is paid a remuneration in the amount of 2 average wages of the employee for the last 12 calendar months in which such a utility model was used.
Separately, it should be noted that the effect of these Rules does not apply to cases when an employer and employee conclude an agreement establishing the amount, conditions and procedure for paying remuneration.