A patent is, according to Law no 64/1991, a title granted by the Romanian Patent and Trademark Office (“OSIM”) giving exclusive rights for a period of 20 years, in exchange for divulging “an invention over a product or a method that is new, has an inventive step and an industrial application“.
Adoption of Law no 64/1991 marked the abandonment of the communist approach with all patents belonging to the State and the return to a system where inventors’ rights were recognized, a system that existed in Romania between 1906 and 1947. As a result, Law no 64/1991 implemented a system mainly focused on inventors’ rights, trying as well to protect employers’ rights and balance between rights and duties in the case of employees’ inventions.
However, by Law no 83/2014 published in the Official Gazette on June 24, 2014 important amendments were brought to the employees inventions regime. Articles 5, 36, 42 and 73 of Law no 64/1991 were abrogated and replaced by the provisions contained in Law no 83/2014, which entered into force on June 29, 2014; consequently all patent and utility models applications filed before June 29, 2014 are subject to the requirements and conditions established by Law no 64/1991 before being amended (tempus regit actum).
According to the recitals of Law no 83/2014 (hereinafter the “Employees’ Inventions Law“), Romania tried to encourage research and development activities and thus increase the number of patent applications filed by companies for the purpose of stimulating both the private sector and the employees with an inventive mission. The Employees’ Inventions Law is – at least judging by its recitals – more business-oriented and more focused on the employers’ rights than the previous enactment, which was more focused on protecting the inventors’ interests.
The Employees’ Inventions Law is applicable to employees’ inventions created by a sole inventor or a group of inventors when the inventor or at least one member of the group of inventors is an employee of a private or public entity.
There are three types of employees’ inventions according to the Employees’ Inventions Law:
- Inventions that are the outcome of an inventive mission provided by way of an agreement, a job description or other mandatory documents by the employer (Article 3 (1) (a) of the Employees’ Inventions Law);
- Inventions created by the employees during their employment or within 2 years after termination of the employment, without being the outcome of an inventive mission, using the technical means provided by the employer, the training or professional formation of the employer or using the information resulting from the employer’s activity or supplied by the employer (Article 3 (1) (b) of the Employees’ Inventions Law);
- Other inventions created by employees.
Who owns the rights on employees’ inventions, according to Law no 83/2014?
1. The Employer, in the case of inventions that are the outcome of an inventive mission undertaken by the employees (falling under the provisions of Article 3 (1) (a) of the Employees’ Inventions Law).
The employee is bound to communicate “as soon as possible” (our note: not clear when should the employee should shout Eureka) to the employer the description of the invention and the solution for the technical problem with sufficient details and data for defining the invention and its solution. After receiving such notice from the employees, the employer is bound to file the patent containing such an invention within 4 months.
2. The Employee, in case of inventions created during or within 2 years from termination of their employment, without resulting from an inventive mission, using however the technical means provided by the employer, the training or professional formation of the employer or using the information resulting from the employer’s activity or supplied by the employer, unless the employer claims these inventions within 4 months (or within the term supplied in the employer’s internal regulation).
In any of the cases above, the employees have a 4 months deadline to challenge in court any unsatisfactory response received from the employer with respect to the invention created during or after termination of their employment relationship.
The right over other inventions created by employees not falling under Article 3 (1) (a) or (b) of the Employees’ Inventions Law belongs to the employees and is subject to the applicability of Law no 64/1991.
© Avocat Ionuț Lupșa, Avocat Ioana Buru
The article above does not create an attorney-client relationship and does not constitute legal advice. If you need legal advice on employees’ invention, please ask for legal advice. If you believe any of the information above is not accurate, please let us know.