In a number of cases, as a result of their labor activity, employees create inventions that are later used by the employee and the employer in production. The creation of such service inventions entails the emergence of appropriate rights for the employee and the employer. What rights do employees and employers have? Who owns the right to an invention if such legal relations are not regulated by an employment contract? Is it possible to add conditions for the use of a service invention to an already concluded employment contract?
WHAT IS A SERVICE INVENTION?
Service inventions are inventions created by the creative labor of employees, employees (including military personnel, employees of internal affairs bodies and national security bodies) in the process of fulfilling their official and labor duties, as well as tasks of production, research, artistic and graphic and other nature. received by the employee from the employer (Clause 2 of the Regulations on service inventions, utility models and industrial designs created in the Republic of Kazakhstan
WHAT RIGHTS DO EMPLOYEES AND EMPLOYERS HAVE WHEN CREATING A SERVICE INVENTION?
When creating a service invention, the employee and the employer acquire both the right of authorship to the service invention and the exclusive right to the invention as an object of industrial property.
Thus, in accordance with paragraph 3 of Article 9 of the Patent Law of the Republic of Kazakhstan, the right of authorship is an inalienable personal right and is protected indefinitely.
The exclusive right in accordance with paragraph 1) of Article 1 of the Patent Law is the property right of the patent owner to use the object of industrial property in any way at his discretion. In this case, both the author of the invention and the employer can act as a patent owner, if the conditions for the emergence of an exclusive right to an invention and obtaining a patent are regulated by an employment contract.
Thus, both the employee and the employer, in the event of an agreement reached by the parties, have the rights to the service invention created as a result of labor activity.
THE RIGHTS OF AN EMPLOYEE TO A SERVICE INVENTION
The employee owns an inalienable personal right of authorship, protected indefinitely, regardless of the presence or absence of ownership of the service invention (Clause 5 of the Regulations).
Paragraph 2 of Article 9 of the Patent Law of the Republic of Kazakhstan establishes that if several individuals participated in the creation of an industrial property object, then all of them are considered its authors (co-authors).
If the right of authorship is not a proprietary right, such a right cannot be waived. That is, having arisen once, such a right remains with the author indefinitely.
Thus, the employee has the right of authorship for service inventions, regardless of the presence or absence of a property right assigned to him.
EMPLOYER'S RIGHTS TO A SERVICE INVENTION
The right to obtain a preliminary patent and a patent for an invention, industrial design or utility model created by an employee in connection with the performance of his official duties or carried out by an employee with the help of technical knowledge or means that are specific to the enterprise belongs to the employer, if the transfer of rights to them is provided for by an employment contract. employment (paragraph 1 of the Regulation).
That is, the exclusive right to a service invention belongs to the employer only if the employment contract between the employee and the employer contains such conditions.
Thus, the fact of creating a service invention on the instructions of the employer in the absence of information in the contract on the transfer by the employee to the employer of the rights to the service invention excludes the employer from having a property right to such an invention.
WHO OWNS THE RIGHT TO AN INVENTION IF SUCH LEGAL RELATIONS ARE NOT REGULATED BY AN EMPLOYMENT CONTRACT?
In the event that the employment contract or a separate agreement supplementing this contract does not contain conditions regarding the rights of the parties in relation to service inventions, the rights to obtain a provisional patent and a patent for inventions created by the employee during the period of employment with the employer belong to the employee (Clause 7 provisions).
That is, all rights to inventions created by the employee in the absence of information in the employment contract about the emergence of such a right from the employer or before receiving the employer's proposal to introduce appropriate additional conditions into the employment contract belong to the employee.
IS IT POSSIBLE TO ADD CONDITIONS FOR THE USE OF A SERVICE INVENTION TO AN ALREADY CONCLUDED EMPLOYMENT CONTRACT?
The requirement to include in the contract of employment the conditions for the use of the service invention or to conclude a separate agreement on them, supplementing the contract, may come from both the employee and the employer.
In the event that the employer made a proposal to introduce appropriate additional conditions regarding the rights of the parties in relation to service inventions to the previously concluded employment contract, and the employee refused the proposal, such a refusal may serve as a basis for the employer to apply disciplinary measures to the employee, provided for by law and internal labor regulations, including termination of the employment contract (Clause 8 of the Regulations).
Thus, the current legislation provides for the possibility of amending or supplementing an already concluded contract with conditions relating to the rights of the employee and the employer in relation to the employee's invention, and also prevents the employee from refusing the employer's proposal to make these changes to the concluded labor contract.