According to the INPI, the National Institute for Intellectual Property, most of patented inventions are made by employed inventors. In a context where creativity constitutes a living force in a company, the question of determining the origins of an invention and who benefits is essential. An intellectual property lawyer will know how to assist employers and employees that wish to lay claim to ownership of an invention, well before the problem degenerates into contentious litigation. According to the conditions under which the invention was developed, the relevant rights could belong to the employer or the employee: the study of the different categories of inventions is thus fundamental.
Work-related invention, attributed to the employer
Consider the following scenario: an employee’s objective is to create an invention. Think of an engineer, a researcher, or an employee in a research and development department, for example.
It makes sense that the business, which pays the employee for inventive and creative purposes, would be the owner of anything invented. The intellectual property code addresses this, stating “inventions done by an employee while executing his or her contract of employment which lists an inventive or creative objective, including studies and/or research, belong to the employer.”
A possible problem could arise where the company’s “inventive or creative objective” must be proved integral to the employee’s domain. The employer has to demonstrate that the invention was created well within the dimensions of the work contract.
In reality, the objective or mission can be stated in either the work contract or in a one-time order/temporary project. If the inventive mission figures in all aspects of the contract, the obstacles will be limited. On the other hand, if it is a temporary project, the employer has to show detailed and precise poof of it so that the ownership of the invention will be neither contested nor contestable.
In these situations, the advice of an intellectual property lawyer offers attractive advantages that are non-negligible.
It is worth noting that the intellectual property code has provisions that address cases where if the employer owns the invention, the employee could have the right to supplementary wages, which will be fixed depending on the case according to individual work contracts, business agreements, or collective conventions.
Non-work related inventions, attributed to the employer
Theoretically, all inventions that are not a result of a company’s creative objective belong to the employee.
Legislators, however, wanted to qualify this scenario, and created a provision that states that “when an invention is created by an employee, whether in the course of doing his or her job, doing company business, or using the techniques, means, or data of the business, the employer has the right, under set conditions and for a limited period of time at the discretion of the state council, to lay ownership or usage claims to the invention and all or part of the rights attached to accompanying patent.”
Let us say that there is a person who, wanting to improve productivity, develops an invention to this end.
The employer has the option to claim rights to the employee’s invention. The intellectual property code articulates “the employee has to receive a fair price that, for lack of an agreement between the parties, is set by the arbitrating commission instituted by article L. 615-21 or by the crown court—they take into consideration all the elements that can be supplied by the employer and employee to calculate a just price according to the function of the initial contributions and the industrial and commercial utility of the invention.”
Non-work related inventions, not attributed to the employer
There is one final category: inventions that were not conceived under the objective the employer imposed, nor during the work hours, nor through the use of the company’s means. In brief, these are all the inventions that do not have any connection to the company.
Think of a Sunday handyman, or an engineer who takes on creative projects on his own initiative and in his free time.
Naturally, the employer will have no right to these inventions. Only the employee can use the invention and reap its benefits.
What happens with the employee?
Employees are obligated to declare their inventions. To do this, the employee should first figure out in which category the invention falls.
It is therefore crucial to submit a declaration with the INPI before proceeding to file a patent application.
The employee can submit the declaration directly to the employer or the INPI to protect it from being contested. If the declaration is filed directly with the INPI, the INPI will be in charge of responding to the employer if the employee is accused of not declaring it.
To mark the receipt of the declaration, the employer has two months to give his or her opinion on the category of the employee’s invention (work-related, non-work-related, attributable or non-attributable), and if the employer does not specify, he or she is expected to accept the categorization the employee chooses.
What to do in case of litigation?
Litigation can arise as a result of a dispute over the classification chosen by either party, given the financial considerations involved.
In case of litigation, it is a good idea for both the employer and employee to employ the services of an intellectual property lawyer to plead your case before the crown court in Paris (the only court that can hear these cases). If you find yourself in such a situation, Lawyers Pichovschi will provide you with all the necessary help to protect your interests.