As it is known, any invention, utility model or industrial design has an author or a group of authors, whose creative work created the corresponding result of intellectual activity.
Creation of such a result of intellectual activity may take place either on the personal initiative of the author, or by order or in connection with performance of their labor duties.
An invention, utility model or industrial design created in connection with the performance of their work duties or on the specific assignment of the employer shall be recognized as an official invention, an official utility model or an official industrial design, respectively.
And not every author who created a particular result of intellectual activity during the performance of his labor duties knows that in addition to his monthly salary, which he receives, he is also entitled to remuneration.
In this regard, in this article I propose to consider issues related to the obligation of the employer who uses the service invention to pay remuneration to the employee who created such invention within the scope of his employment duties.
Paragraph 4, Article 1370 of the Civil Code of the Russian Federation[i] (hereinafter - the Civil Code, the Code) states that if the employer obtains a patent for an official invention, an official utility model or an official design, or decides to keep the information about such invention, utility model or design secret and informs the employee about it, or transfers the right to the patent to another person, or does not obtain a patent for the filed application for reasons beyond his control, the employee is entitled to remuneration.
Thus, the right to remuneration arises for the employee, who created the service invention, not by virtue of the very fact of creation of a potentially protectable technical solution, but only if the employer performs one of the actions specified in the above rule in respect of this result of intellectual activity, namely, if the employer
- obtains a patent for a service invention,
- Decides to keep the information on such invention secret and informs the employee about it,
- transfers the right to a patent to another person,
- does not obtain a patent on the application filed by him for reasons within his control.
At the same time, the explanations contained in paragraph 132 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 № 10 "On application of Part Four of the Civil Code of the Russian Federation"[ii] (hereinafter - Resolution № 10) states that the obligation to pay remuneration by the employer to the employee (the author) does not depend on the actual use or non-use of the service invention, service utility model or service industrial design. However, the actual use, due to the nature of the work, may depend on the amount of remuneration agreed by the employee (author) and the employer.
Moreover, paragraph five of clause 131 of Decree #10 states that in case of joint invention, utility model or industrial design creation by several employees the amount of remuneration shall be determined for each co-author separately, also based on his/her contribution to the final result.
In this regard, there is a reasonable question: "And what is the amount of this remuneration? One salary? A quarterly bonus? An extra day off? Or maybe a voucher to a sanatorium?
As stated in the above paragraph 4 of Art. 1370 of the Civil Code, the amount of remuneration, the conditions and order of payment by the employer is determined by the contract between him and the employee, and in case of a dispute - the court.
Moreover, with regard to this rule the highest court explained in the fifth paragraph of paragraph 131 of Decree № 10, according to which the amount of remuneration is determined in the event of a dispute - the court under the rules of paragraph 4 of Article 445 of the Civil Code (paragraph 1 of Article 6 of the Civil Code).
It is worth noting that according to the above paragraph 4 of Article 445 of the Civil Code, if a party for which in accordance with this Code or other laws the conclusion of a contract is obligatory, evades its conclusion, the other party is entitled to appeal to court to compel the conclusion of the contract. In this case the contract is considered to be concluded on the conditions specified in the court decision from the moment the relevant court decision enters into legal force.
Meanwhile, the above legislative norms still do not provide a clear answer to the question: "How much is due to the author for the invention created by him, used by the employer?
In my opinion, in a situation where the amount of remuneration is determined by the parties - the employer and employee, the principle of freedom of contract applies, and in this case, the conditions and procedure for payment of remuneration are determined by agreement of the parties.
This point of view is confirmed by the explanations given in the Decree of the Government of the Russian Federation from 16.11.2020 № 1848 "On approval of the Rules for payment of remuneration for service inventions, service utility models, service industrial designs"[iii] (hereinafter - the Rules), which defines the procedure for payment of remuneration. Thus, in the second paragraph of paragraph 1 of the said Rules it is stated that they do not apply in cases where the employer and the employee conclude a contract establishing the amount, conditions and procedure for payment of remuneration.
Thus, I believe that if the amount and procedure for payment of remuneration is determined voluntarily by the parties to the contract, remuneration may be defined as a lump sum payment, and as fixed payments made with a certain periodicity. Moreover, the amount of the remuneration may depend on the number of products produced and sold using the invention, or may be tied as a percentage to the profits obtained from the use of this invention. At the same time, the above list of procedures for payment of remuneration is not exhaustive.
Thus, it should be concluded that the Rules are primarily aimed at facilitating the courts the procedure for calculating the remuneration due to the author, in case of his dispute with the employer.
It is also worth noting that the payment of remuneration to the employee (author) is made during the term of validity of the patent. In case of early termination of the patent for invention, utility model or industrial design (Article 1399 of the Civil Code) the payment of remuneration shall be terminated. At the same time, if the patent for invention, utility model or industrial design is restored (Article 1400 of the Civil Code), the obligation to pay the remuneration shall be restored. (paragraph 133 of the Resolution No. 10).
Moreover, the same paragraph 133 of the Resolution No.10 states that if the early termination of the patent for invention, utility model or industrial design is made for the purpose of termination of the remuneration payment (for example, the invention continues to be used in production), the employee (the author) shall be entitled to claim the damages from the employer (paragraphs 1 and 4 of Article 10 of the Civil Code). This legal approach is designed to protect the author-employee, as obviously the weaker party from the unfair actions of the employer.
This is probably all that we would like to briefly describe the right of the author of a service invention to remuneration.
[i] Civil Code of the Russian Federation (Part Four) of 18.12.2006 № 230-FZ (ed. of 26.07.2019, amended 24.07.2020).
[ii] Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 № 10 "On the application of Part Four of the Civil Code of the Russian Federation".
[iii] Decree of the Government of the Russian Federation of 04.06.2014 № 512 "On Approval of the Rules for Payment of Remuneration for Service Inventions, Service Utility Models, Service Industrial Designs".