Update: Nov. 2, 2022
A lawyer specializing in patent and industrial property law informs you that the applicable texts relating to the employee's invention patent.
Does the invention belong to the employee?
Useful for the employee as well as for the company, theobtaining a patent for a creation protects its holder and offers him the monopoly of exploitation of his invention, which brings him many advantages.
According to the INPI "90% des patented inventions are made by salaried inventors. Nevertheless, theinvention of employee is an area still little known which therefore generates many conflicts between companies and employees. These conflicts are partly due to negligence in the drafting of employment contracts.
The payment of additional remuneration to employees who are the authors of an invention sometimes presents difficulties in implementation. Thus, it is the responsibility of each of the parties not to know the legislation on this subject. Industrial property law provides that when an employee develops his invention, he must inform his employer, even if the project was carried out outside his working hours.
According to the provisions of the employee's employment contract, the invention belongs to the company, which has four months to claim the invention or to decide that it belongs to the employee. Consequently, it is imperative for the company, as for the employee, to know in which case the invention was made.
The cintellectual property ode oversees the regime for employee inventions. In its article L. 611-7, it specifies that “the inventions made by the employee in the performance of his employment contract belong to the employer. If the latter files a patent on this invention, he must inform his employee. The employee is then entitled to additional remuneration according to the conditions determined by his collective agreement. »
For this regime to apply, two conditions must be met:
- The inventor must have the status of employee to benefit from a additional compensation and mandatory paid by the company.
- The invention must be patentable
You are an employee and your employer refuses your patent ? You are an employer and your employee has not kept you informed of his invention under his employment contract?
How to react in this case? What are your remedies? Stone of Roquefeuil, lawyer specializing in intellectual property law at Paris accompanies you to defend your interests and those of your company.
What is an invention patent? A lawyer specialized in industrial property assists you
A employee invention patent is a protection for an invention carried out by an employee in the course of his duties. The employee who creates an invention has the obligation to inform his employer by means of a form which mentions:
- The purpose of the invention, its characteristics and its description
- The classification proposal: mission invention or off-mission invention
- The context that allowed the invention
- Fields of application of the invention
- Technical and economic advantages of the invention
- Inventors / authors and partners involved (identity and contact details, name of the laboratory, identity and contact details of the employer)
- The distribution of contributions between inventors and authors
For his part, the employer must acknowledge receipt of the declaration. If he intends to exercise his right of allocation, he must do so within four months.
The document must then be delivered to the National Institute of Industrial Property (INPI). The sending must be done with a special envelope intended for the declarations of inventions of employees. A lawyer specialized in intellectual property law accompanies you in this process.
The employee, like the employer, is bound by an obligation of loyalty and confidentiality requiring them not to disclose the invention to a third party. This in particular as long as the classification, the attribution of the invention and the remuneration of the employee are not decided.
Employee invention: there are 3 types of inventions
The categories of inventions are specified in article L. 611-17 of the Intellectual Property Code. A lawyer specializing in intellectual property law can tell you about the type of invention that concerns you.
The Invention of Mission
Article L. 611-17 of the Intellectual Property Code specifies that "Inventions made by the employee in the performance either of an employment contract comprising an inventive mission which corresponds to his actual duties, or of studies and of research which are explicitly entrusted to it, belong to the employer (…).
The employee who is the author of an invention informs his employer, who acknowledges receipt of it in accordance with the procedures and deadlines set by regulation.
The methods of application of this article will be fixed by decree in Council of State”.
This concerns the invention that the employee has made under his employment contract.
The law of November 26, 1990 made compulsory the principle of additional remuneration for the benefit of the employee who is the author of a mission invention: "The conditions under which the employee, author of such an invention (mission invention) benefits from additional remuneration are determined by collective agreements, company agreements and individual employment contracts (art. L. 611-7-1 of the CPI)”.
In this context, the legislation provides for the employer's right to benefit from a patent following an employee's invention, however, he must pay a additional financial compensation for the employee. The average of this premium is 2200€ in France.
Non-mission invention attributable to the employer
Paragraph 2 of Article L. 611-7 of the Intellectual Property Code specifies that:
“All other inventions belong to the employee. However, when an invention is made by an employee either in the course of the performance of his duties, or in the field of the company's activities, or by the knowledge or use of techniques or means specific to the company or data provided by it, the employer has the right, under the conditions and time limits set by decree of the Conseil d'Etat, to have the ownership or enjoyment of all or part of the rights attached to the patent protecting the invention of his employee (…)”.
The invention was conceived in the context of the work of the employee but was not requested by the employer. This invention may give rise to a patent. This on condition that the company negotiates with the employee and that it pays him remuneration in exchange for the transfer of these rights.
The invention outside the mission and not attributable to the employer
In this context, it is an invention designed by an employee, unrelated to the company. The company cannot then apply for a patent since the invention belongs only to the employee.
Rights of exploitation of an invention: patent lawyer checks the applicable texts
In order to prevent possible disputes, it is essential that the employer inserts a “inventive mission” clause in the employment contract of its research and development employees. Also, he must inform his employees of the legal status of the employee's invention. Finally, he must ensure that internal specifications are drawn up. This is so that each employee knows the amount and the conditions of allocation of the additional remuneration.
The drafting of employment contracts must be carried out by a specialist. The same applies to the calculation of additional remuneration. A lawyer specializing in intellectual property law can help you in this process.
The employer refuses the patent: what are the employee's recourses with the help of the patent lawyer?
Sometimes, the collective agreement of a company imposes that the inventions which give rise to a taking out of patent by the company are the subject of a premium. In this case, this same agreement does not impose the payment of a premium in the context of a non-patentable invention.
As a result, when the employee's invention may sometimes not be patentable or constitute an innovation used by the company. In this case, the payment of a bonus is left to the discretion of the employer.
The exception of the trainee and the freelancer for the patent of invention
A trainee not being an employee of a company, the invention that he could be brought to make, therefore belongs to him. Nevertheless, employers should be careful to draw up contracts relating to the ownership of inventions made during an internship.
The freelancer, just like the intern, is not an employee and therefore not subject to the regime for employee inventions. The company must therefore plan a contract guaranteeing the attribution of the exploitation rights of an invention.
The declaration of invention: what is the role of the CNIS?
The National Commission for Employee Inventions (CNIS) can be referred to by the employer or by the employee. It is chaired by a magistrate assisted by two representatives. One representative for the employers and one for the employees.
The CNIS procedure results in two scenarios:
- The first being that the CNIS manages to reconcile the employer and the employee. In this case, it draws up a report of their agreement.
- The second being that the CNIS fails to reconcile the two parties. In this case, it draws up a conciliation proposal which constitutes an agreement between the two parties. One of the two parties nevertheless has the possibility of seizing the Paris court in order to submit the dispute.
Would you like advice on the invention disclosure procedure? Come with a lawyer specializing in intellectual property law. Are you an employer or employee and are you having difficulty with an invention? Stone of Roquefeuil, lawyer specializing in intellectual property law at Paris, accompanies you in the defense of your interests.
See as well :
Goldd. no. 2021-1658, 15 Dec. 2021, relating to the devolution of intellectual property rights on assets obtained by authors of software or non-salaried inventors or public officials hosted by a legal person carrying out research: JO 16 dec. 2021