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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Intellectual property in employment context

Employees

Argentina

Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

Australia

Copyright

The Copyright Act provides that the employer will own the copyright if an employee made the work "in pursuance of the terms of his employment by another person under a contract of service or apprenticeship." Recent case law has clarified that it will not be sufficient that an employment relationship exists and instead the employee must have made the work within the scope of their duties or because the contract of employment expressly or impliedly required (or at least authorized) the work to be made.

Patent

Patent legislation does not provide for the ownership of an invention in an employment context. Under the common law, the issue is whether the invention was made in the course of the employee's employment and whether it was the employee's role to invent, ie, whether they had a "duty to invent." This frequently is (and should be) dealt with in the terms of the contract of employment although the contract may not always be determinative in deciding whether the employee owns the patent.

Confidential information

Employment contracts frequently include a confidentiality provision or there is a standalone confidentiality agreement. Even where there is no express agreement, a court will usually imply an obligation of confidence in an employment relationship and will consider factors such as the nature of the relationship and the nature of the information.

Mask works / circuit layouts

Under the CLA, if a circuit layout was made by a person in the course of his employment under a contract of service or apprenticeship, the employer is the owner unless there is an agreement in writing to the contrary.

Austria

The Austrian Copyright Act does not recognize "works made for hire," ie, the original author is always the original owner of the copyright. Licensing of the exploitation rights is possible and in certain cases Austrian law recognizes the implied license for an employer to use an invention of an employee who developed the invention within the scope of their employment using the employer's resources (equipment or funding). Nevertheless, it is highly recommended that employers address the licensing of inventions developed by employees in the employment agreement. There is a statutory assumption of such license for computer programs.

The Austrian Patent Act provides similar principles to patents, with the exception that there is a statutory transfer claim for inventions made by employees in public service (clerks). Otherwise, a transfer right must be agreed in the employment contract or collective contract.

In respect to semiconductors, the same principles as regarding patents apply; however, there is a statutory assumption for a license in case of works made for hire (applies to both employees and contractors). The same applies to designs and utility patents.

Trademarks are freely transferable and can therefore also be made for hire for a legal entity.

Belgium

Generally, subject to some exceptions (such as software and topography protection) and in the absence of contrary, contractual or statutory, provisions, employees will retain ownership of the intellectual property developed by them.

In particular, reference can be made to the following rights:

Copyright

Where works are created by an author under an employment or a public servant’s contract, the economic rights may be assigned to the employer on the condition that such assignment is expressly agreed in writing and that the creation of the work falls within the scope of the contract. However, there are some presumptions, such as those regarding the assignment of economic rights in computer programs, that automatically favor employers.

The original author retains the moral rights on the work, since such rights are, in principle and as a whole, non-transferable and inalienable.

Patent

Title 1 (Patents) of the Code of Economic Law provides that the right to a patent shall belong to the inventor or the inventor's successor in title. Title 1 (Patents) has not set out special rules regarding patent rights of employees, so that the status of such inventions is governed by the employment contract. Belgian case law, however, generally makes a distinction between inventions performed during professional duties (pro employer), personal inventions (pro employee) and mixed inventions (depending on the circumstances of the case and the judge's discretionary power). It is therefore accepted that the employer is entitled to the invention that is made in the framework of an employment contract, ie, the invention that is made during an agreement and by an employee that is hired or instructed by his or her employer to make inventions or to carry out research in a given domain.

Design

If a design has been created by an employee in the course of his or her employment, the employer shall, unless specified otherwise, be regarded as the creator.

Brazil

Copyrights

Except for software as mentioned below, the Copyright Law is silent regarding the ownership of works created by employees, which will be decided by the courts on a case by case basis. The concept of "work for hire" is not recognized by the Law.

Software

Unless otherwise agreed, the employer owns the rights to software developed during the employment agreement whose purpose is research and development of software or which result from the nature of the job description. Unless otherwise agreed, compensation for the employee's work shall be limited to his or her salary.

Mask works

Unless otherwise agreed, the employer owns the rights to mask works developed during the employment agreement in which the creative activity results from the nature of the job description or in which the employee uses resources, technological information, industrial or commercial secrets, materials, facilities or equipment of the employer. Unless otherwise agreed, compensation for the employee's work shall be limited to his or her salary.

Patents

Inventions and utility models belong to the employer when they result from an employment agreement performed in Brazil whose purpose is research or inventive activity or if the inventive activity results from the nature of the employee's services. Unless otherwise agreed, compensation for the employee's work shall be limited to his or her salary.

Trademarks

There is no legal provision concerning the ownership of trademarks in employment context. The rule is "first to file," if the filing does not infringe any legal provision.

Canada

It is customary for employees to sign invention assignment and confidentiality agreements.

Regarding patents, in the absence of an agreement, an employer can show ownership by demonstrating that the work leading to the invention was part of the employee's duties and responsibilities in the employee's terms of employment.

With respect to copyright, ownership of a work created in the course of employment rests with the employer in the absence of an agreement to the contrary. However, moral rights in the work are granted exclusively to the author. Moral rights cannot be assigned, but can be waived by agreement.

Chile

According to the law, in employment agreements and provision of services, whose nature is the fulfillment of an activity inventive or creative, the faculty to request registration as well as the eventual industrial property rights belong exclusively to the employer or who commissioned the service, unless otherwise provided.

The employee, not required to perform an inventive or creative function according to his work contract, may request registration, and shall be the owner of the eventual industrial property rights derived from the inventions made by him, which will belong exclusively to them. However, if the knowledge acquired within the company benefited a in an evident manner the invention, such faculties and rights shall belong to the employer, in which case they must grant the worker an additional remuneration to be agreed upon the parties.

It is customary for employees to sign transfers of intellectual property and confidentiality agreements.

China

For copyright, a work shall be deemed a "work for hire" if it is created by an individual in order to fulfill a task assigned by its employer. The copyright in that work shall vest in the author, except that the employer shall have priority to use the work within its business scope. Within two years of the work's completion, the author may not authorize a third person to use the work in the same manner in which his or her employer uses it without the employer's consent.

With respect to engineering design drawings, product design drawings, maps and computer software created mainly by using the material and technical conditions of, and under the responsibility of, the employer, the work's author shall enjoy the right of authorship, and the employer shall enjoy the other copyright rights, in which case the employer shall reward the author.

For patent, if an invention is created in the course of performing the duties of an employee, or mainly by using the material and technical conditions of an employer, this invention shall be deemed a service invention. For a service invention, the employer has the right to apply for a patent. After such an application is approved, the employer shall be the patentee. The employer shall give an award to the employee who creates the patent, and a reasonable remuneration shall also be given the employee based on the scope of application of the patent and the amount of the proceeds derived from such application.

For a non-service invention, the inventor or designer has the right to apply for a patent. After such an application is approved, the said inventor or designer shall be the patentee.

If inventions are made by an employee using the materials and technical conditions of an employer, and if the employer has concluded a contract with the inventor or designer stipulating agreements concerning the right to apply for the patent or the ownership of the patent right concerned, such agreements shall prevail.

Colombia

In Colombia, the same provisions that govern employment agreements govern the intellectual property in service agreements.

Per article 8 of the Resolution 85 of 1974 issued by CAN, economic rights derived from the inventions created by an employee hired to research belong to the employer, unless it is otherwise provided in an employment agreement.

The employee will be the owner of the patent of an invention or a copyright of a work and own the rights derived from it, provided that within its functions he or she does not have access to secret or confidential research. Notwithstanding the above, according to the general rule of Law 1450, rights derived from industrial property are transferred to the employer unless it is otherwise provided in the employment agreement. However, an employee will always have a right to be recognized as the creator of the invention or author of a work.

The author (employee) is the owner of the moral and economic rights in regard to copyrights. Nonetheless, law presumes that an employee transfers economic rights to its employer to the extent that it is necessary to carry out the usual activities of the employer at the time the work was created. 

The abovementioned provisions will only apply to written agreements and will also govern services agreements.

Czech Republic

Unless otherwise agreed, the author's economic rights to a work created by the author in fulfilling his duties arising from the employment or civil service contract with the employer shall be exercised by the employer in his or her own name and on his or her own account (ie, generally as if owned by the employer, similar to common law "work made for hire" regime). The employer may only assign the exercise of the right pursuant to this paragraph to a third party with the author's consent, unless this occurs when the employer's enterprise or its part is sold as a going concern.

Denmark

Danish Act on Employees' inventions grants IP-rights to the company as a general rule (LBK 014 24/01/2012).

Danish Copyright Act grants all IP rights to software developed by an employer as part of his or her job to the employer.

Finland

The Finnish Copyright Act does not specifically address the issue of IP rights in an employment context, apart from the copyrights to computer programs, which are by default to be considered to be transferred to the employer. Other copyrighted works created by an employee remain the property of the employee, unless otherwise agreed or clearly implied, eg, in case the employee has specifically been hired to create content for the company.

In respect of patentable inventions, the Act of an Employee's Inventions governs the right of an employer to acquire the invention made by the employee, given that the invention has been made as part of the employee's tasks. Employees are entitled to a mandatory, reasonable compensation for such transfer.

According to the Act on the Protection of Semiconductor Topographies, employer has the right to acquire and register the rights to the topography, given that the topography has been made as a part of the employee's tasks and that the parties have not agreed otherwise.

It is common and recommended to include provisions regarding IP rights and confidentiality in employment contracts.

France

There is no work for hire under French law, except for copyright on software and related documentation, and patents, to a certain extent and provided that certain conditions be met.

For a work made by an employee within the course of his or her employment, the rights in the work belong to the employee (although some case law has admitted implicit transfer to employer). Rights are vested in the employer only if the work is collective, or (in certain circumstances) if the work is a software or related documentation.

Germany

As regards copyright, the Copyright Act prescribes that the general provisions of the Copyright Act shall also apply if the author has created the work in execution of his duties under a contract of employment. Accordingly, German copyright law does not feature a work for hire doctrine, and thus as a general rule, copyright is owned by the author (employee). However, jurisdiction and literature acknowledge in general that by virtue of the employment contract, the employer is implicitly granted sufficient and exclusive exploitation of work of the expressly delegated tasks. However, the scope of such right of use is always limited by the purpose of the employment agreement. Thus, it can also not be excluded that the employer's right of use might terminate as soon as the employment agreement is terminated. Therefore, it is advisable to regulate the transfer of the exploitation rights to the employer in written form (typically in the employment contract).

As regards computer programs, the Copyright Act explicitly prescribes that if the employee creates a computer program in the execution of his duties or following the instructions given by the employer, the employer has exclusive rights to exercise all the economic rights in the program, unless agreed otherwise.

The Act on Inventions of Employees (Arbeitnehmererfindungsgesetz) regulates patentable inventions and inventions eligible for utility models made by employees. Employees are required to immediately notify their employers of any job-related inventions in writing. The employer may claim ownership of such invention within four months of the notification date. Until a law reform in 2009, the employer had to actively claim the invention during this four-months-period, otherwise it remained with the employee. However, as a result of the reform, the employer is now deemed to have claimed the invention, unless it specifically releases the invention to the employee in writing within four months of the notification. If the employer claims an invention, it must pay "reasonable compensation" to the employee and ensure the invention is properly protected in Germany. The amount of "reasonable compensation" must reflect the economic value of the invention, the position of the employee within the company, and the share of the company in the development of the invention.

Furthermore, the Act on Inventions of Employees provides for an obligation of the employee to inform the employer of any other inventions made during the employment relationship but which are not job-related. Prior to any other exploitation of such an invention in relation to third parties, the employee is also obligated to offer the employer at least a non-exclusive right of use under reasonable conditions.

Hong Kong

The default position in Hong Kong is that an employer owns any intellectual property created during the course of employment. It is also customary to include suitable contract clauses with respect to assignment and confidentiality in the employment contract.

The Patents Ordinance provides that the employer owns the invention if the invention is created in the course of the employee's normal duties or duties specifically assigned to him or the invention might reasonably be expected to result from the carrying out of the employees' duties, or the employee has a special obligation to further the interests of the employer's undertaking and the invention was made in the course of the employee's duties. Notwithstanding the employer's ownership of such inventions, the employee may be entitled to monetary compensation, being a fair share of the benefits derived, if the patent resulting from the invention is of outstanding benefit to the employer.

The Copyright Ordinance provides that, subject to contrary written agreement, the employer is the first owner of the copyright of literary, dramatic, musical or artistic work or film made by employee in the course of employment. A further award shall be made to the employee if the use of the employee's work is beyond the employer's and the employee's reasonable contemplation at the time of making the work in the course of employment.

Hungary

All acts related to intellectual property (Patent Protection Act, Copyright Act, etc.) regulate generally when a work is made in the frame of an employment relationship.

Under the Copyright Act, the employer, as the legal successor of the author, automatically obtains economic rights once a work is handed over, if the preparation of the work was the author's obligation within the scope of his/her employment, in the absence of any agreement to the contrary ("work for hire" doctrine).

The Patent Protection Act distinguishes the "service invention" and "invention of employee." "Service invention" means any invention created by a person in the execution of his duties stemming from employment that includes to work out solutions within the domain of the invention. "Employee invention" means any invention created by a person who is not required to do so under his contract of employment, however, the exploitation of such invention falls within the sphere of activities of his employer.

In case of service inventions, patent rights shall be vested in the employer, as the inventor's successor in title. In case of employee inventions, patent rights shall be vested in the inventor; the employer, however, is entitled to exploit the invention. The employer's right of exploitation is non-exclusive; the employer shall not grant a license of exploitation. Special rules apply to the consideration to be paid to the employees for service inventions and employee inventions.

India

It is customary for employees to sign invention assignment and confidentiality agreements. Failing to include the required text in the form of an assignment clause in employment agreements may raise enforceability issues, especially for work product that is patentable.

A concept similar to "work for hire" appears under Section 17 of the Copyright Act, wherein the employer is deemed to be the first owner of copyright in a work made by an employee, during the course of his employment.

Apart from copyright ownership, all other intellectual property rights created by employees require specific assignment and registration. In view of this, it is customary for employment agreements to contain general assignment provisions in favor of the employer, and enabling provisions, allowing the employer to seek specific assignment of identifiable work product.

Indonesia

Copyright Law provides that the creator of a creation shall be the creator and copyright holder, for creations created under an employment relationship or based on an order.

Patent Law provides a different approach in that the party who is entitled to the patent of an invention being created in an employment relationship is the party who has given the work, unless agreed otherwise.

Therefore, in order to overcome this situation it is practically common in Indonesia to incorporate an intellectual property assignment clause in the employment contract or even a separate declaration to be signed by the employee as an attachment to the employment contract where the employee agrees to assign all intellectual property that he has created during the tenure of his employment to the employer.

Ireland

In general, works created by employees in the course of employment will be considered to be the intellectual property of the employer. However, this is not always the case if the work was created in the employees own time and in a way that did not rely on the time or information of the employer or otherwise relate to the day to day duties of the employee. This is not always clear-cut and so employment contracts will typically include provisions that seek to give certainty to the intellectual property rights as between the employer and the employee.

Israel

As set out above, in an employer/employee relationship, the employer is usually the owner of the right created in the course of such relationship. This holds true for service inventions under the Patent Law, works under the Copyright Act and layout-designs under the Integrated Circuits (Protection) Law. There are no legal provisions regarding this issue in connection with trademarks and trade secrets. Notwithstanding the foregoing, case law recognizes an obligation on the part of an employee to preserve the employer's trade secrets as a result of the employee's duties of good faith towards the employer.

With respect to the employee's entitlement to royalties for "service inventions" (inventions created during an employee's employment with the employer), Section 134 of the Patent Law provides that "if there is no agreement that prescribes whether, to what extent, and on what conditions, the employee is entitled to remuneration for a service invention, then the matter shall be decided by the Compensation and Royalties Committee established under Chapter Six."

Despite the provisions in various laws, as detailed above, it is customary to include a general covenant in employment agreements in which the employee assigns all intellectual property rights that he may have, to the employer (expressly including any service inventions).

It should be noted that a series of cases since 2010 have considered the question of an employee's right to royalties on service inventions as a separate question from the issue of ownership of the right (which vests in the employer). Furthermore, Committee for Compensation and Royalties (Committee) established in its decision under Chapter Six of the Patents Law that it is possible to waive this right and that a general waiver of rights by the employee suffices for this purpose, with no specific reference to royalties under the Patent Law being required (Barazani v. Iskar). The High Court of Justice stated that the Committee's determination that the right to royalties on service inventions is not a protective labor law right and may thus be overridden by contract seems to be appropriate. The High Court of Justice recommended regulating the matter of royalties for service inventions (whether by way of legislation or through a voluntary arrangement in the relevant industries).

Italy

Copyright

As a general rule, unless otherwise agreed by the parties, should a work be commissioned by third parties or created by an employee in the performance of his tasks or upon instructions given by the employer, the economic rights on such work would be held by the commissioner or employer, while moral rights, which are non-transferable and inalienable, would be retained by the author.

With regard to software and databases, unless otherwise agreed, the employer holds the exclusive right to exploit the work created by an employee in the performance of his or her tasks or upon the instructions of the employer. With regard to industrial designs, the economic rights would be held by the employer in case the work has been done by the employee in the performance of his or her duties. Moral rights would in any case be retained by the employee.

Patent

When an industrial invention is made during the performance or fulfillment of an employment contract, whereby the inventive activity is deemed to be the objective and the employee is paid to invent, the employer retains the patent rights arising from the invention, and the inventor (which is not entitled to any bonus or compensation with regard to the invention) retains the right to be recognized as such.

When an industrial invention is made during the performance or fulfillment of an employment contract not providing specific compensation for inventive activity, the employer holds the patent rights arising from the invention and the inventor is entitled to a fair compensation and holds the right to be recognized as inventor.

If none of the above applies, but the invention is made in the field of activities of the employers, the employer retains the right to purchase the invention. Different principles apply to inventions carried out within the frame of publicly funded researches by universities and similar institutions and researchers.

Japan

The "work for hire" doctrine is applicable to copyrights and mask works. The doctrine is also applicable to patents as long as it is agreed in the work rules or employment agreement that the work for hire patents are inherently owned by the employer in advance. Employees must be reasonably compensated by an employer for the work for hire patents, patent assignments or grant of an exclusive license. The law does not provide the compensation figures but certain factors to be taken into consideration are provided and the amount must be reasonable. For copyrights, a work must be made public under the name of an employer except for computer program related copyrights.

Even if an employer did not provide that patents created by employees are inherently owned by the employer from the moment of their creation in the work rules or employment agreement, statutes give an employer a right that is similar to a shop right within the scope of a non-exclusive license. This only applies to patents.

Luxembourg

Copyright

In case of a work commissioned by third parties or works created by an employee in the performance of his tasks or upon instructions given by the employer, the employer or the commissioner is to be considered the assignee of the economic rights if the parties have expressly agreed to this in writing.

The original author retains the moral rights on the work but is in principle entitled to transfer them in whole or in part.

Patent

When the inventor is an employee and unless the parties have expressly agreed otherwise in writing, patent rights belong to the employer:

  • When an industrial invention is made during the performance or fulfillment of the employment contract, whereby the inventive activity is deemed to be the objective and the employee is paid to invent and make researches
  • When an industrial invention is made through the knowledge or use of technics or specific means to the employer or data procured by the employer

Design

If a design has been created by an employee in the course of his employment, the employer shall, unless specified otherwise, be regarded as the creator.

Mexico

The Mexican Labor Act provides that an employee-inventor has the right to be named as author of his inventions. This is a right to recognition, not ownership. With respect to ownership of inventions, the Labor Act provides that:

  • Where an employee-inventor works in research and development or works on perfecting processes used in the employer's business, the resulting intellectual property belongs to the employer; provided that if the benefit to the employer is disproportionate to the salary paid to the employee, the employee shall have the right to a royalty, as determined by mutual agreement of the parties or by the Mediation and Arbitration Board
  • Intellectual property developed by an employee engaged in any other area shall belong to the employee; provided that the employer shall have the first right to the exclusive use or acquisition of the invention or patents (on terms to be negotiated by the parties or determined by the Mediation and Arbitration Board)

Netherlands

Copyright

The Dutch Copyright Act stipulates that where labor carried out by an employee consists in the making of certain literary, scientific or artistic works, the employer shall be deemed the author thereof, unless otherwise agreed between the parties.

As the employer is deemed to be the author of the work, it is likely that he also retains the moral rights. However, this is still an unanswered issue in Dutch literature. It is also justifiable to understand that the employee (as the original author) retains the moral rights on the work. However, they may be waived as far as permitted by law.

Patent

The Patents Act provides that the right to a patent shall belong to the inventor or his successor in title. Where the invention for which a patent application has been filed has been made by a person employed in the service of another person, the employee shall be entitled to the patent unless the nature of the service entails the use of the employee's special knowledge for the purposes of making inventions of the same kind as that to which the patent application relates. Should the latter be the case, the employer shall be entitled to the patent.

Design

If a design has been developed by an employee in the execution of duties, the employer shall, unless otherwise agreed, be deemed to be the designer.

Where a design is created in an employment context, the copyright relating to the design shall belong to the party deemed to be the designer, in accordance with the provisions of the Benelux Convention on Intellectual Property.

New Zealand

Where an employee makes, in the course of their employment, a literary, dramatic, musical or artistic work, that person's employer is the first owner of any copyright in that work, subject to any agreement to the contrary. The position is the same with respect to design rights created in the course of employment. With respect to patentable inventions, the invention belongs to the employer if it was made in the normal course of the employee's duties or specifically assigned duties.

Where specific work is commissioned, then the person who paid for the commissioned work will generally own the rights in that work.

Usually, employment contracts will contain provisions relating to the ownership and/or waiver of rights, if any, in intellectual property created by the employee, as well as provisions relating to non-disclosure or confidential information and restraints of trade.

Norway

The Norwegian Right to Inventions made by Employees Act (No: arbeidstakeroppfinnelsesloven) regulates the right to patentable inventions which are invented by employees employed in private and public sectors.

The general rule is that employees have the same right to their original inventions as any other inventor. However, there are certain exceptions to this general rule that provides the employer the right or priority to the inventions.

Employees must provide their employer with a notice of any invention in accordance with section 5 in accordance with the Norwegian Right to Inventions made by Employees Act.

The employer has the following types of claims against the employer's inventions:

  • In accordance with section 4 paragraph 1 of the Norwegian Right to Inventions made by Employees Act, if the employee is employed as an inventor or researcher, or the invention is within a certain task set by the employee, then the employer has a right to claim that such patent is transferred to him, if this invention can be used within the company's business area. Within four months from the employee's notice, the employer has to inform the employee whether he wishes to claim any rights to the invention.
  • If the invention is created by an employee in connection with the employment but not as set out in paragraph 1, then section 4 paragraph 2 of the Norwegian Right to Inventions made by Employees Act states that the employer has a right to request a license to the invention. If the employer wishes to receive a more extensive right, then he has a first right of refusal for four months after the provision of the employee's notice to enter into an agreement for such purposes.
  • Where the invention has been made by the employee in circumstances that are not connection with the employment, then the employer has a first right of refusal for four months after the provision of the employee's notice to enter into an agreement for such purposes. This is subject to the invention being relevant to the company's business area, and this provision does not apply to universities or similar institutions.

Inventions made by the employee within 6 months after he has left the company will be considered to have been created under the service of the employer. This is subject to the invention being relevant to the business area of the company and was part of the inventor's work during employment, or the invention is a result of a task that was assigned by employer to the employee.

If the employee transfers the invention to the employer, he has the right to a reasonable remuneration, except when the value of the inventions does not exceed what reasonably should be expected, taken into account the salary and other benefits received as employee.

The Copyright Act does not state any specific rules for work created in the scope of an employment other that copyright in computer programs. Unless otherwise agreed, computer programs created by an employee as a part of his tasks or by following instructions of the employer will be transferred to the employer. Other works made by an employee remain as a general principle under the Copyright Act the property of the employee, unless otherwise agreed. However, it is still outlined by non-statutory employment law principles that the copyright is transferred to the employer if creating of the copyrighted material is considered necessary for the employment contract to fulfill its purpose, or otherwise necessary for the employers ordinary business. Clarification in the employment contract is strongly recommended for clarity.

The right to lay outs generated by an employee is transferred to the employer unless there is a contractual agreement stating otherwise.

The employer's right to a design is not regulated in the Design Act. The employee therefore owns the design, unless otherwise agreed or employer can prove there is a presumption between the parties that such design is to be owned by employer. However, also this will be governed by the above mentioned non-statutory employment law principles.

Poland

Under the general rules of Polish law, the employer generally acquires all the intellectual property rights to works created on the basis of an employment contract, unless the contract provides otherwise.

Therefore, based on the employment relationship, the employer acquires, inter alia, the following rights to intellectual property created in the course of employment:

  • Right to inventions, designs and utility models, which also includes the right to obtain a patent or protection rights for the design or utility model
  • Economic copyrights

However, copyrights to computer programs created by an employee in the course of the performance of his/her employment duties are vested in the employer.

The acquisition of copyrights to works that are not computer programs does not include personal copyrights (non-disposable rights of the author).

However, it is permissible to include in an employment contract an authorization for the employer to exercise the personal copyrights to an employee's works. This is usually provided in the contract in order to enable the employer to interfere in the integrity of the work (in particular, by modifying the work) or to disseminate the work without indicating its author.

In addition, the transfer of the right to use and dispose of works derived from an employee's work does not occur automatically with the transfer of economic copyrights. Therefore, the contract of employment needs to specifically provide for the transfer of derivative rights as well as the fields of exploitation in which this transfer occurs.

Portugal

As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In case the name of the creator is not in the work, it is presumed that the copyright belongs to the entity for which the work was created. In specific circumstances, even if the patrimonial rights belong to the entity for which the work was made, the intellectual creator, in addition to the agreed remuneration, may have the right to a special remuneration.

In case of a computer program created by an employee in the exercise of his or her functions or according with the instructions provided by the employer, the employer shall be the owner of the rights over the programs, except when otherwise agreed or implied in the purposes of the contract. In specific circumstances, even if the patrimonial rights belong to the entity for which the computer program was created, the intellectual creator, in addition to the agreed remuneration, may have the right to a special remuneration.

The right to patent shall belong to the inventor or his or her successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

Romania

Inventions/patents

Under the Labor Inventions Law, the employer owns the rights over inventions resulting from the exercise of the inventor's job specifications expressly mentioned in his employment agreement and in the job description sheet or mentioned in other binding material for the inventor that provides for an inventive mission and over inventions created while the inventor is an employee, as well as for inventions created after termination of employment for a maximum of two years after the termination of the employment agreement, by knowing or using the employer's experience and material resources, as a result of the professional training acquired offered to the employee at the expenses of the employer or by the use of information derived from the employer's activity. Inventions must be disclosed at once to the employer. In this case, the employer has four months (subject to a longer term provided in the internal regulation) to categorize the invention as a labor invention and to claim ownership over the invention. If the employer does not claim ownership, the invention belongs to the employee.

Employers can benefit from a non-exclusive license granted by the employee for the patented invention if the employer no longer wishes to continue with the post-filing procedures for the invention or is not interested in protecting the invention in some states other than Romania.

However, employees own the rights to inventions developed by employees entirely on their own time without use of employer resources and that are unrelated to the employer's business.

Copyright

As a general rule, employees own the copyright for works created in the exercise of their duties described in their labor contract. In this case, the employee may authorize the use of such work by third parties only with the consent of the employer and after compensating the employer for the costs incurred for the creation of the work. The employer is not required to obtain the employee's authorization for the use of the work within its scope of activity.

Specific rules are applicable to computer programs created by employees in the exercise of their duties or following the instructions of employer. In this case, the patrimonial rights over the computer programs belong to the employer subject to a contrary provision in the labor contract. However, the direct enforceability of such provision in the absence of a specific assignment provision in the labor contract is under current debate.

Russia

The patentable and copyrightable works created by an employee in an employment context are deemed to be owned by the employer (unless the parties agree otherwise or, in case of patentable objects, unless the employer fails to timely formalize its patent rights). However, the employee is entitled to remuneration payable by the employer. While the law is more liberal in relation to copyright works and generally allows the remuneration for their creation to be part of the salary, for patentable works the stand-alone remuneration must be agreed on and paid.

The author retains personal inalienable rights to created objects in any case.

Saudi Arabia

There are no regulatory protections that specifically cover employees in the Trade Secrets Regulations. However, agreed confidentiality provisions in an employment contract may grant certain levels of protections.

The Copyright Law restricts the right to assign copyright in future works (any such purported assignment is deemed "null and void"). Standard language in employment contracts often vests ownership of all works created by the employee in the employer. Employers that usually rely on future copyright assignments need to ensure that suitable intellectual property rights provisions are used, as those rights will not automatically vest in the employer.

The general position under the Patents Law is that the employer shall be the owner of the relevant protection document (a patent, or a certificate of layout design), subject to certain stipulated requirements and exceptions in the Patents Law. There are however provisions in the Patents Law that provide for an employee's right to receive a special award (either agreed between the parties or a committee formed with members nominated by the President of KACST).

Singapore

If a trademark, work or a design is created by an employee in the course of his or her employment, the trademark, work or design will, in accordance with the relevant statute, be owned by default by the employer rather than the employee  unless there are agreements between the employer and employee to the contrary.

It is commonplace for employers to include confidentiality clauses in employment agreements in Singapore.

Slovak Republic

Under the Copyright Act, works created for fulfilment of duties under employment contracts or similar contracts are considered to be employment works. The same applies to works created by authors who are members of managing, controlling or supervisory bodies of a legal entity, or a statutory body or member of a statutory body of a legal entity. Property rights to employment works are exercised by employers, unless otherwise agreed. If property rights are exercised by employers, employees cannot license the works to a third person; employees as authors shall not exercise property rights to the works themselves. Employers are entitled to license property rights to a third person, unless otherwise agreed.

If property rights are exercised by employers, employees as authors automatically give their consent to publish the works, to use employers' label on the works; to change/intervene/finish the works.

Similarly, these provisions are applicable to computer programs, databases and cartographic works created on contract.

Under the Patent Act, inventions created within the fulfilment of employment contracts are considered to be employment inventions. The right belongs to employers, unless otherwise agreed. The right of the employee to be recognized as the inventor of the invention is not precluded. Employees as inventors shall inform employers about inventions in writing and deliver all the materials necessary for evaluation of the invention. Employers may exercise their rights to the invention within three months, otherwise the rights are transferred to employees. If employers exercise their rights, employees are entitled to a remuneration.

Employment solutions under the Act on Utility Models are regulated in a similar manner as employment inventions under the Patent Act described above.

Employment designs under the Act on Designs are regulated in a similar manner as employment inventions under the Patent Act described above.

Under the Act on Topography, if topographies are created within the fulfilment of duties under employment contract or other contract, the rights belong to employers or entitled contractual parties, unless otherwise agreed.

South Korea

In Korea, the right to a patent belongs to the inventor or his or her successor in title. The right to a patent may be transferred by assignment, in whole or in part. An inventor has the right to be identified in a patent application. Conversely, the applicant for a patent application need not be the inventor, as the right to a patent may be transferred before the filing of the application, eg, by contract or inheritance.

The Invention Promotion Act (IPA) defines a "work for hire" invention as an invention that results from:

  • Present or past duties of the employee
  • Being within the scope of the employer's business

Unless otherwise stipulated, the ownership of a "work for hire" invention belongs to the inventor-employee. In the meantime, the employer is given a royalty-free and non-exclusive license (often called "shop right") to use the invention if the employee is a small or medium sized entity defined under the Small or Medium Sized Entity Framework Act (SME). In order for an employer that is not an SME to receive a non-exclusive license, the employer must have a contract or employment regulation where the employee agrees to assign the "work for hire" inventions to the employer in advance and which has to be executed or adopted after consultation with the employee.

In this regard, the employee must report the completion of the works made for hire to his or her employer (when two or more employee-inventors contributed to the invention, all of the employee-inventors must report together). The employer must notify in writing whether it plans to succeed the works made for hire or not within four months from the above invention completion report by the employee. However, if the employer fails to make such notification in writing, the works made for hire are deemed as free inventions to the employer.

The employee is entitled to "reasonable compensation" for any "work for hire" invention acquired by the employer. Further, the IPA provides several factors for determining "reasonableness" of the compensation:

  • The employer is required to adopt an internal compensation rule and provide the employees with adequate details about the program in writing, including the type of compensation, criteria for determining the amount of compensation and the payment method
  • The employer is required to provide the inventor employee with adequate details in writing, regarding the compensation amount, including how the amount was derived based upon the above rules
  • The employer is required to consult with the employees regarding adoption or amendment of the above compensation rule; if an amendment is pursued that is less favorable to the employees, the employer is required to obtain consent from at least 50% of the relevant employees
  • In addition to the above requirements, the compensation must be determined in consideration of the profits that the employer gained or expects to gain from the in-service invention and the degree of contribution by the employer and the employee to the creation of the particular invention; and the IPA also stipulates that even if a patent application is not filed for a "work for hire" invention acquired by an employer, the employee is still entitled to reasonable compensation

Spain

Generally speaking, intellectual property rights (inventions, topographies of semiconductor products, industrial designs, copyright works and computer programs) created by employees within the scope of their employment relationship in principle belong to the employer.

In particular, Law 24/2015 on Patents sets forth that inventions made by an employee during the term of his contract, work or service with a company, and which are the result of research that is explicitly or implicitly the object of his contract, shall belong to the employer. The employee will have the right to an additional remuneration in case that his personal contribution to the invention and the relevance for the company exceeds the scope of the tasks regulated in his employment agreement. Furthermore, the employee shall have the right to a reasonable remuneration in relation to the use of the technical improvements developed by the employee which offer a competitive advantage to the employer.

If inventions do not fulfill the aforementioned conditions, they shall belong to the employee who is the author. Nonetheless, if the employee makes an invention "related" to his professional activity and the knowledge gained within the company has had a decisive influence thereon or he has used means provided by the company, the employer shall have the right to claim ownership of the invention or to reserve a right to its use. The employee has a month to give the communication to the employer, who will have three (3) months to exercise its rights. In the event that the employer does not communicate to the employee its willingness to assume the ownership of the invention within the aforementioned three months period, its rights shall expire, enabling the employee to proceed to the solicitation of the patent for itself. If the employer, having communicated the employee its willingness to assume the ownership of the invention, does not claim in front of the authorities, within a reasonable and pre-agreed term, the industrial property rights, the employee shall claim those on behalf of the employer.

In the event that the employer assumes the ownership of the invention or reserves a right to its use, the employee shall have the rights to a fair (economic) compensation/remuneration proportional to the industrial and commercial importance of the invention as well as considering the value of the resources or know-how given by the employer and the contributions made by the employee. The aforementioned remuneration may consist of a share on the profits made by the employer from the exploitation of the rights over the invention.  

Regarding copyright works, according to the Legislative Royal Decree 1/1996 on Intellectual Property, the transfer of the exploitation rights of a work created by virtue of employment relations to the employer is governed by the terms agreed upon in the contract in writing. In the absence of such an agreement in writing, it is presumed that the exploitation rights have been granted exclusively and with the scope necessary for exercising the usual activity of the employer (at the time the work is delivered). Similarly, where a computer program is created by an employee in the course of his duties or following instructions given by his employer, the ownership of the exploitation rights on the computer program created, including both the source program and the object program, belong exclusively to the employer, unless otherwise agreed in writing.

Sweden

The Copyright Act does not state any specific rules for work created in the scope of an employment other that copyright in computer programs. Unless otherwise agreed, computer programs created by an employee as a part of his tasks or by following instructions of the employer will be transferred to the employer. Other works made by an employee remains the property of the employee. However, a right of use is implied, and if not otherwise expressly agreed, the employer may use the employee's work within its field of business and for his or her normal business activities for the purposes that could be anticipated when the work was created. It is customary for employees to sign copyright assignment and confidentiality agreements. Some collective labor agreements, for example within the mass media sector, provide acquisition rights in the employee's copyright.

The right to a semiconductor product topographies created in an employment relationship belongs to the employer, unless otherwise agreed.

Pursuant to the Act of an Employee's Inventions (1949:345) (Lagen om rätten till arbetstagares uppfinningar), the employer has under certain circumstances the right to implement the invention in its business or the right to fully or partly acquire the invention made by an employee as part of his tasks. Employees have a mandatory right to reasonable compensation for such transfer.

Switzerland

Inventions and designs created by the employee in his or her function as an employee and in fulfillment of his or her contractual duties belong to the employer. The same applies to software copyrights but not to all other copyrights. Therefore, it is advisable to include contractual clauses dealing with the transfer of copyrights from employees to employers in employment agreements.

Non-technical trade secrets are not transferred to the employer.

Taiwan

According to the Copyright Act, the ownership of an authorship work completed by an employee within the scope of his or her employment is decided according to the agreement entered into between the employer and employees. In the absent of such agreement, the employee shall be deemed as the author of the work and the economic rights to such work shall be vested in the employer. The term "employee" referred to in the preceding two sentences includes a civil servant.

According to the Patent Act, where an invention, an utility model or a design is made by an employee in the course of performing his or her duties, unless otherwise provided for in an agreement between the employee and employer, the right to apply for a patent and the patent right thereof shall be vested in his or her employer, on the condition that the employer shall pay the employee reasonable remuneration. Where the right to apply for a patent and the patent right are vested in the employer, the inventor, utility model creator or designer concerned shall be entitled to a right of attribution.

Where an invention, utility model or design made by an employee has no connection to the course of performing his or her duties, the right to apply for a patent along with the rights attached to such patent for such invention, utility model or design shall be vested in the employee. However, if such invention, utility model or design is made through the utilization of the employer's resources or experiences, even though the right to apply for a patent and the patent right are vested in the employee, the employer may, after paying the employee a reasonable remuneration, exploit the invention, utility model or design. An agreement concluded between an employer and an employee precluding such employee from enjoying the above-mentioned rights and interests shall be null and void.

The Integrated Circuit Layout Protection Act provides that, if a circuit layout is created by an employee within the scope of employment, the right to apply for registration and the rights attached to such circuit layout right for such circuit layout shall be vested in the employer unless otherwise provided for in an agreement between the employer and employees to the contrary. The employee shall be entitled to the right of attribution based on the facts of the creation.

Ukraine

Ukrainian copyright legislation recognizes a "work for hire" doctrine in which an employer owns works of authorship created by an employee within the scope of employment. At the same time, the transfer of IP rights on work for hire objects from employee to employer must be formalized in writing. Otherwise, arguably by virtue of Ukrainian law only 50% of the IP rights on created objects would be deemed owned by the employer, while the other 50% will remain owned by the employee. It is customary for IP relations to be regulated in the written employment agreement.

Another more complicated procedure is provided by the Ukrainian laws with respect to patent rights to inventions, utility models and industrial designs. An employee must notify an employer in writing about the fact of creation, including the detailed description of the creation. Within four months from the date of receipt of the notification, an employer should:

  • File application for the patent or transfer such right to third party or
  • Decide to keep the creation as confidential information

Within four months from the date of receipt of notification, an employer shall conclude an agreement with an employee formalizing the transfer of rights from employee and payment of remuneration to the employee.

Failure to do the above actions allows an employee to file the application for the patent.

United Arab Emirates

The Copyright Law restricts the right to assign copyright in future works. Specifically, future copyright may only be assigned in up to five future works. In practice, this requires that after an author has created five works, he will continue to own copyright from the sixth work onwards. Standard language in employment contracts often vests ownership of all works created by the employee in the employer. Employers that usually rely on future copyright assignments need to ensure they also have the right to require the employee to enter into additional assignments of copyright subsisting in additional future works and requiring retroactive assignments after they have been created. Ideally, they should also insist on a license covering the period between creation and assignment, because those rights will not automatically vest in the employer.

United Kingdom

With respect to copyright and design rights (including semiconductor topography designs), where an employee (as distinct from independent contractors) makes a work in the course of employment, the employer will be first owner of the copyright in the work, subject to agreement to the contrary.

Inventions belong to the employer if the invention was made in the normal duties of the employee or specifically assigned duties.

United States

It is customary for employees to sign inventions assignment and confidentiality agreements. However, some states (such as California and Washington) have statutory prohibitions on employers requiring employees to assign inventions that the employees have developed entirely on their own time without use of employer resources and that are unrelated to the employer's business.

US copyright law recognizes a "work for hire" doctrine in which an employer owns works of authorship created by an employee within the scope of employment.

The "work for hire" doctrine does not apply to inventions or patents. Employee inventors own their inventions and the resulting patents absent an assignment by the inventor to his employer.

US patent law recognizes a "shop right," which is an implied license for an employer to use an invention of an employee who developed the invention within the scope of their employment using the employer's resources (equipment or funding). The implied license is not transferable except in the sale of a business.

The DTSA requires that employee inventions agreements that are executed or updated (ie, amendments or modifications to existing agreements) beginning on May 12, 2016 include notice of certain immunities provided under the law. The law gives an employee immunity from civil and criminal liability under state and federal law for disclosing a trade secret if the disclosure was made to report or investigate an alleged violation of law and the new law requires that companies include notice of such immunity in any agreement with an employee that governs the use of trade secret or confidential information. Failure to provide this notice would result in the company not being able to recover exemplary damages or attorneys' fees from the employee if the company were to sue the employee for misappropriation of trade secrets.