Can an employee patent an invention?
In the tech industry, it is often required that an employee needs to resolve technical problems. This may, from time to time, result in the creation of new inventions. The question then arises: who may file a patent for this new invention?
The answer to this question lies in article 12(1) of the Rijksoctrooiwet 1995 (hereinafter referred to as “ROW”) and the employee agreement. These two sources are briefly discussed hereinafter.
Article 12(1) ROW
According to Article 12(1) of the ROW, when an employee creates an invention within the scope of their employment duties, the rights to the invention belong to the employer. The assignment to the employer is therefore automatically and not further to this effect is required.
However, if the employee is employed for a position unrelated to the invention, the employee will retain ownership of the invention. For example, if the employee is employed as a software engineer of medical equipment, a new device for cleaning windows will fall outside the scope of employment. Therefore, the employer has no right to the invention and the employee may file a patent for the window cleaning device.
Employment agreement
The employer’s right to the invention, provided in article 12(1) ROW, may be deviated from by means of an employment agreement. The agreement may, for example, stipulate, that the employee retains all rights to the invention or that the rights are shared between the employee and the employer. The employment agreement may also dictate that all intellectual property rights are automatically assigned to the employer by means of the agreement. This would, therefore, confirm the effect of article 12(1) ROW.
Must the employee be compensated?
Article 12(6) ROW stipulates that an employee must be reasonably compensated for the inventions. Generally, it is assumed that a salary serves as sufficient compensation for such inventions. Furthermore, it is important to understand that the employee does not have a right to future income from the patent. This includes a selling price, or royalties derived from the patent. However, the employee and employer may provide differently in an agreement.
Conclusion
Understanding the rights to an invention is crucial to avoid any future misunderstandings or disputes. Furthermore, it is important to understand the effect of the employer having the rights to the inventions created by an employee. This includes that the employee has no right to use the invention for his own benefit should it belong to the employer. Understanding this, may prompt an employee to discuss different employment terms.
