Constitutional Court clarified the amount of remuneration for author of service objects of patent law

According to paragraph 4 of Art. 1370 of the Civil Code of the Russian Federation [1], an employee who, in the performance of work duties or a specific assignment of the employer, created a service invention, service utility model or service industrial design, has the right to receive remuneration. The amount, conditions and procedure for its payment are determined by an agreement between the employee and the employer, and in case of a dispute - by the court.

In the absence of an agreement, the remuneration is paid in accordance with the normatively established Rules [2] for the payment of remuneration for objects of patent law, which determine the rates, procedure and terms of its payment. It should be noted that the courts [3] do not accept the calculation of remuneration if it is based on a local act of the employer. Referring to Art. 1246 of the Civil Code of the Russian Federation, the courts indicate that the effect of a normative legal act establishing the rules for payment of remuneration can be excluded by the parties only if the employer and employee enter into an agreement containing other conditions. Moreover, such conditions must be contained directly in the agreement between the employee and the employer (labor or civil law) or such an agreement must contain a reference to a document defining, for example, the procedure for paying remuneration.

This year, the legislator revised some provisions of these Rules and changed them in terms of the size of rates, conditions for determining the amount of remuneration, etc. The reason for the change was the consideration by the Constitutional Court of the Russian Federation of the case [4] on checking the constitutionality of clause 4 of Art. 1370 of the Civil Code of the Russian Federation and clause 3 of the Rules for the payment of remuneration for official inventions, official utility models, official industrial designs [5].

In particular, the Constitutional Court of the Russian Federation supported the position that in order to resolve the issue of paying remuneration to an employee, the fact of use or non-use of a service object of patent law has no legal significance, since its use during the validity period of the patent is presumed . In this regard, the employer retains the obligation to pay remuneration regardless of the introduction of such an object into the production or other activities of the employer or its other actual use by the employer.

At the same time, the Constitutional Court of the Russian Federation indicated that the court may reduce the amount of remuneration provided for by the Rules if the employer does not use (insufficiently uses) the service object of patent law or, contrary to his reasonable and justified expectations, does not benefit from such use as a result of factors that do not depend on him and which he could not and should not have foreseen, or for other valid reasons.

We believe that this approach is fully consistent with the principle of fairness and allows us to maintain a balance of interests of both the employee and the employer.

Sources:

1. “Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) // SPS “ConsultantPlus”
2. Decree of the Government of the Russian Federation of November 16, 2020 N 1848 (as amended on June 02, 2023) “On approval of the Rules for the payment of remuneration for official inventions, official utility models, official industrial designs” // SPS “ConsultantPlus”
3. See, for example, the Decision of the Dzerzhinsky District Court of the city of Perm dated March 2, 2020 in case No. 2-13/2020 (left unchanged by the Determination of the Seventh Cassation Court of General Jurisdiction dated September 24, 2020 N 88-14345/2020)
4. Resolution of the Constitutional Court of the Russian Federation dated March 24, 2023 N 10-P
5. approved Decree of the Government of the Russian Federation dated 06/04/2014 N 512. Lost force from 01/01/2021 due to the publication of Decree of the Government of the Russian Federation dated 03/18/2020 N 296 // SPS “ConsultantPlus”