An employee's invention, an employee's utility model

The authors of inventions, utility models created in the course of fulfilling their job duties are often interested in the question what rights they have, and what material benefits they should obtain for this? We shall try to answer these questions within the framework of the current patent legislation.

So, let us consider at first what an employee's invention, an employee's utility model are. To do so, let us turn to the relevant Article of Part 4 of the Civil Code of the Russian Federation, in which the above definitions are disclosed, namely:

The invention, the utility model created by an employee due to the fulfillment of his job duties or an employer’s particular task shall be recognized to be, respectively, an employee's invention, an employee's utility model.

What rights, based on the definition of the employee's invention, the employee's utility model, belong to the author, and what rights belong to the employer?

The right of authorship to an employee's invention, an employee's utility model shall belong to the employee (author).

The exclusive right to an employee's invention, an employee's utility model and the right to obtain a patent shall belong to the employer, unless otherwise is stipulated in a job agreement or a civil law agreement concluded between the employee and the employer.

If otherwise is not stipulated in the agreement concluded between the employer and the employee, the employee must notify the employer in writing on the creation due to the fulfillment of his job duties or the employer’s particular task of such result for which legal protection is possible.

If within four months from the date of notifying by the employee the employer fails to file an application for a patent in respect of the relevant employee's invention, the employee's utility model to the Federal Executive Authority on Intellectual Property, if he fails to transfer the right to obtain a patent for the employee's invention, the employee's utility model to another person, or if he fails to inform the employee about keeping the information about the relevant result of intellectual activity in secret, then the right to obtain a patent for such invention, utility model shall be returned to the employee. In this case, during the term of the patent being in force, the employer shall be entitled to use the employee's invention, the employee's utility model in the own manufacture under the conditions of a simple (non-exclusive) license with the payment of remuneration to the patent holder, the amount, the conditions and the payment procedure of which shall be determined by the agreement concluded between the employee and the employer, and in case of a dispute – by the court.

If the employer obtains a patent for the employee's invention, the employee's utility model, or makes a decision to keep the information about such invention, utility model in secret and notifies the employee about it, or transfers the right to obtain a patent to another person, or fails to obtain the patent based on the application filed by him due to the reasons not depending on him, then the employee shall be entitled to remuneration. The amount of remuneration, the conditions and procedure for its payment by the employer shall be determined by the agreement concluded between him and the employee, and in the case of a dispute – by the court.

The right to remuneration for the employee's invention, the employee's utility model shall be inalienable, but it shall pass to the author’s heirs for the remaining the term of the exclusive right being in force.

The invention, utility model created by the employee using the monetary, technical or other material means of the employer, but not due to the fulfillment of his job duties or the employer’s particular task, shall not be the employee’s ones. The right to obtain a patent and the exclusive right to such invention, utility model shall belong to the employee. In this case, the employer shall be entitled to demand at his own choice either granting him a gratuitous simple (non-exclusive) license for the use of the created result of intellectual activity for his own needs for the entire term of the exclusive right being in force or reimbursement of the costs incurred by him due to the creation of such invention, utility model.

In case of the availability of the agreement concluded between the employer and the employee, which stipulates the conditions, amounts and procedure for the payment of the author's remuneration for the created by him employee’s invention or the employee’s utility model, the parties shall be governed by this agreement. If such agreement is not available, the parties should be governed by the Rules for Paying Remuneration for Employee’s Inventions, Employee’s Utility Models approved by the Government of the Russian Federation, which have come into force since October 1, 2014.

The above Rules establish a procedure for paying remuneration for employee’s inventions, employee’s utility models.

In accordance with the Rules, the remuneration for the creation of an employee’s invention, an employee’s utility model should be 30 percent of the average salary of the employee, who is an author of the employee’s invention, for the last 12 calendar months and 20 percent of the average salary of the employee, who is an author of the employee’s utility model for the last 12 calendar months, which shall be calculated on the date the employer has filed an application for obtaining a patent for such invention, utility model, or on the date he has made a decision to keep the information about them in secret, or on the date the employer has transferred the right to obtain a patent to another person.

The above said payment, depending on the basis of the right to remuneration that the employee has got, shall be exercised by the employer as a lump sum not later than 2 months from the date the employer has received a patent for the employee’s invention, the employee’s utility model, or from the date he has made a decision to keep the information about them in secret, or from the date the employer has transferred the right to obtain a patent to another person, or not later than 18 months from the date of filing an application for obtaining a patent for such invention, utility model, in the event that the employer fails to obtain the patent based on the application filed by him due to the reasons not depending on him.

The remuneration for the use of the employee’s invention, the employee’s utility model shall be paid to the employee, who is their author, in the amount of his average salary for the last 12 calendar months, during which such invention, utility model have been used.

The remuneration shall be paid within a month after the expiration of every 12 calendar months, during which such invention, utility model have been used.

In the event that the employer has granted the right to use the employee’s invention, the employee’s utility model to another person under a license agreement, the employee, who is their author, shall be paid remuneration in the amount of 10 percent of the sum stipulated by the license agreement.

The payment of remuneration to the employee, who is the author of such invention, utility model, shall be exercised by the employer within one month from the date of receipt by him of the remuneration stipulated by the license agreement, or a part of such remuneration, in the event that the license agreement provides for the payment in the form of a fixed lump sum payments or periodic payments, percentage deductions from profit (revenue) or in some other form.

In the event that the employer has transferred to another person the right to obtain a patent or the exclusive right to the employee’s invention, the employee’s utility model under an agreement on the transfer of the right to obtain a patent or an agreement on alienation of the exclusive right, then the employee, who is the author of such invention, utility model, shall be paid remuneration in the amount of 15 percent from the remuneration stipulated by the agreement within one month from the date of receipt by the employer of the mentioned remuneration.

If the employee’s invention, the employee’s utility model have been created by the joint creative work of several employees, who are co-authors of such invention, utility model, then the remuneration shall be divided among them equally, unless otherwise is stipulated by an agreement concluded between such employees.

In the event of the termination of the job relationship between the employee, who is the author of the employee’s invention, the employee’s utility model and the employer, the employer's obligation to pay remuneration shall remain.

Thus, the authors of the inventions, the utility models, created within the framework of the fulfillment of their job duties, shall be entitled to material remuneration, and it is necessary to know this!