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Chief amendment of the intellectual property law and the new employment regime

Date: 18/04/2017

There have been emerging articles which inform about so called “chief amendment” of the intellectual property law which is expected to be submit for a discussion and consultation to the Government of the Slovak republic in April 2017. Is it indeed such fundamental regulation or the lawmaker has been simply inspired by the already existing legislation and case-law at the European and international level[1] for a long time? Within context of which then a statement that the mentioned legislative initiative has not been „forced from the outside (an implementation of the European regulations, international treaties etc.)“ [2] sounds to some extend exaggeratedly. However, a proactive approach, whether stimulated by domestic or cross-border experience may contribute more to the functioning of the internal market as oppose to merely forced responses on requirements from the European community. Therefore, it appears right to ask at this point, whether more flexible approach considering specific needs of the entrepreneurs and development of the market, would not be more appropriate if the lawmaker genuinely intents to focus on development of the innovation potential and support of the technology transfer as they have claimed.

Shall stop by the new employee regime to which the specific attention has been dedicated within the process of amendment of the act no. 435/2001 Coll. On patents, supplementary protection certificates as amended (patent act), whereby we are not going to analyse a subsidiary application of the Commercial Code (act no. 40/1964 Coll. the Commercial Code as amended) while we do not consider a more profound discussion on objectives of its auxiliary capacity needed for this article.

The new regulation inter allia brings an automated transfer of the right to invention between employee and employer whereas employee is obliged to inform employer immediately, in writing in a statutory outlined manner about the right to invention. We see as a downfall of this amendment in absence of any regulation regarding a failure to comply with formalised prerequisites of the notice addressed by employee to employer once the law stipulates it. A question rose therefore whether a noncompliance notice will trigger intended legal consequences or the statutory period will be suspended until errors are remedied and for how long period whereas an early filing of an application is one of the most sensitive issue of the patents? For now, we shall only believe that mentioned deficit will not deteriorate the legal certainty of right holders and it will not create an opportunity for individuals who needlessly postpone exploitation of the employee’s invention.

Another interesting issue of the employee invention regime is undoubtedly opportunity of inventor to claim a fair payment evaluated via determining of technical and economic significance and benefits gained through its exploitation or another utilisation while a material attribution of employer to its development and scope and content of inventor’s workload are considered. However, if employee believes the payment has not comply with conditions stated in the previous sentence or it is unsatisfactory in another way, he or she is entitled to request to be presented with records essential for determination of an amount of the additional compensation within the period of three years starting from the date of claim of the right to invention by employer (author’s note: under condition that the employer does not cease to exist without successor in title). It will be interesting to see application of this legal regulation in practice considering the broad meaning of term the fair remuneration. It seems reasonable to anticipate that employers will not be willing to provide for confidential, especially accounting documentation about own business activities to current or former employees and inventors will not be able to ascertain amount of the additional compensation based on these records without an expert assistance from a different entity while most cases are still likely to end up before the courts.

In view of the above we recommend to the respective employers to begin the preparation on possible consequences of this regulation and building of a best practise of determining of the fair remuneration for employees’ inventions already, eventually to create an adequate method of calculating the additional compensation.

Notwithstanding, we still have high hopes for a positive effect of this amendments on development of the intellectual property law in Slovakia and we appreciate it as the right step forward, hoping that the legislative in this area of law is going to adapt flexible to everyday needs of not only Slovak but predominantly of the internal market of the European Union particularly in regards to the common digitalisation plans.

JUDr. Darina Parobeková, LL.M.

[1] Shanks v Unilever Plc &Ors [2017] EWCA Civ 2; Kelly v GE Healthcare ltd [2009] EWHC 181 (Pat), [2009] RPC; Act (1949:345) on the Right in Inventions by Employees http://www.wipo.int/wipolex/en/details.jsp?id=3643; The Application of Japanese Article 35 regarding reasonable compensation for patents by employed inventors in Syuji Nakamura vs. Nichia Corporation, Pace International Law Revue, Vol. 17, Issue 2, Fall 2005, Art. 10 Jean E. Healy, http://digitalcommons.pace.edu/cgi/viewcontent.cgi?article=1153&context=pilr.

[2] „Veľká novela“ prinesie zásadné zmeny v práve priemyselného vlastníctva (1. časť), JUDr. Tomáš Klinka, Duševné vlastníctvo, Úrad priemyselného vlastníctva Slovenskej republiky, 1/2017, str. 18, ISSN1339-5564.