Hamburger
  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 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 works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

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

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly 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

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including patent rights, the court may, at request of the interested party, order the appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including trademarks, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    Whenever there is violation of or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including designs, the court may, at request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.

    Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay a compensation to the injured party for the damages resulting from the violation.

    In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne out of protection of the right in question and the investigation and termination of the harmful conduct shall also be taken in consideration, as well as personal injury.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    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 cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their 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.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Intellectual property in employment context

Employees

Angola

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 cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

The right to patent shall belong to the inventor or their 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.

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 they develop 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 which nature is the fulfillment of an inventive or creative activity, the faculty to request registration as well as the eventual industrial property rights generated in the performance of such activity belongs exclusively to the employer or who commissioned the service, unless otherwise provided.

The employee who is not required to perform an inventive or creative function according to his or her work contract, may request registration, and shall be the exclusive owner of the eventual industrial property rights derived from his or her activities. However, if the knowledge acquired within the company benefited 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.

For simplification and clarification, it is customary for employees to sign transfer of intellectual property and confidentiality agreements, which are often included as specific clauses in the employment contract.

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 Resolution 85 of 1974 issued by CAN, economic rights derived from 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, they do 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 only apply to written agreements and 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 104 24/01/2012).

Danish Copyright Act grants all IP rights to software developed by an employee 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:

  1. Copyright on software and related documentation and
  2. Patents, to a certain extent and provided that certain conditions be met.

For a work made by an employee within the course of their 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, SAR

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 and 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 because of the nature of his duties and the particular responsibilities arising from the nature of his duties 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 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).

In December 2019 a ruling by the High Court of Justice provided, for the first time, a concrete answer to the issue of an employee's right to remuneration for service inventions. The court ruled that employees have no “vested right” under Israeli law to receive remuneration for their inventions, and that where there is no actual agreement between the employer and the employee determining whether, to what extent, and on what conditions the employee has a right to remuneration for a service invention, the employee can apply to the Committee for a decision on the matter. In addition, the High Court of Justice ruled that the period of proscription for filing an employee's motion to receive remuneration for a service invention commences on the date on which the employee is required by law to notify the employer of the invention, namely as soon as possible after the date of invention.

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 their 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 (ie, employee).

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 their tasks or upon the instructions of the employer.

With regard to industrial designs, economic rights would be held by the employer in case the work has been created by the employee in the performance of their 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 specifically 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 that does not provide 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 related to the field of activities of the employer, the employer retains an option rights to use and purchase the invention.

Different principles apply to inventions carried out within the frame of publicly funded research 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 their 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, and
  • 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 Patent 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. In case the salary is to be regarded insufficient compensation for the employee’s loss of patent to his/her employer, a remuneration can be applicable.

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.

Philippines

With regard to copyright, in the case of work created by an author during and in the course of their employment, the copyright shall belong to (i) the employee, if the creation of the object of copyright is not a part of their regular duties, even if the employee uses the time, facilities and materials of the employer, and (ii) the employer, if the work is the result of the performance of their regularly assigned duties, unless there is an agreement, express or implied, to the contrary.

For inventions, in case the employee made the invention in the course of their employment contract, the patent shall belong to (i) the employee, if the inventive activity is not a part of their regular duties, even if the employee uses the time, facilities and materials of the employer, and (ii) the employer, if the invention is the result of the performance of their regularly assigned duties, unless there is an agreement, express or implied, to the contrary.

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.

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, China

According to the Copyright Act, the moral rights and economic rights of an authorship work completed by an employee within the scope of employment is vested in the employee unless otherwise provided for in an agreement between the employer and employee to the contrary. Even in the absent of such agreement, the economic rights to authorship 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 resulting patent shall be vested in the employer, on the condition that the employer shall pay the employee reasonable remuneration. Where the right to apply for a patent and the resulting patent are vested in the employer, the employee as 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 with his or her job duties, the right to apply for a patent along with the resulting patent 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 resulting patent are vested in the employee, the employer may, after paying the employee a reasonable remuneration, exploit the invention, utility model or design. Any 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 shall be vested in the employer unless otherwise provided for in an agreement between the employer and employees to the contrary. However, 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 percent of the IP rights on created objects would be deemed owned by the employer, while the employee will maintain ownership of the other 50 percent. 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 4 months from the date of receipt of the notification, an employer should:

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

Within 4 months from the date of receipt of notification, an employer shall conclude an agreement with an employee that formalizes 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, for example, 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.