The question of who owns intellectual property (IP) rights in the workplace has gained significant relevance, especially given that employees are involved in extensive creative activity nowadays. The Moldovan legal framework has well-defined rules on this subject, providing insight into the important question: who holds the rights over the creations, inventions, industrial designs, and utility models created by employees?
While recent amendments have established clear guidelines, some ambiguities still remain, potentially leading to disputes between employers and employees. Given the value of employee-generated IP in the professional realm, defining the ownership over such IP is of utmost importance.
The New Legal Framework
Under the current framework, both patrimonial and moral rights to IP objects are vested in the employee, while the employer retains a default right to use the creation in its regular business activities. This marks a departure from the previous regime, where patrimonial rights were automatically assigned to the employer, with moral rights remaining with the employee.
The recently enacted Moldovan Law on Copyright and Related Rights (Copyright Law) of July 28, 2022, grants employers an automatic right to use employee-created IP objects without requiring additional consent from employees. Notably, even for works made for hire, the default rule attributes patrimonial rights to employees.
Thus, unless explicitly agreed otherwise, employees retain patrimonial rights over IP objects thereby created and can make use of such rights as they see fit. However, granting the right to use an IP object to third parties requires the employer’s consent and involves special compensation to be granted by the employee to the employer. Such compensation serves as an acknowledgment and reward of the employer’s contribution to the costs associated with the creation of the IP object.
Contractual Adjustments to IP Ownership
However, the above-mentioned framework can be overridden through a contractual agreement between the employee and employer, allowing flexibility in determining IP ownership.
To deviate from the default rule and assign patrimonial rights over IP objects to the employer, a special setup shall be provided in the employment agreement. Alternatively, an internal IP policy approved by the employer can establish clear guidelines on the ownership and usage of employee-created IP objects.
The contractual framework shall explicitly establish the employer’s default ownership of the patrimonial rights to the IP objects created by employees. Provisions regarding the official registration of IP objects shall also be addressed in the contractual arrangement of the parties.
Thus, the novelties of the Copyright Law require companies to draft employment agreements with additional precaution.
Special Remuneration of the Employees
Another important issue to be considered is the remuneration of employees for the IP objects developed. While the Copyright Law does not provide explicit guidance, the Government Regulation on IP objects created during employment by employees (Regulation) dated December 31, 2003, offers comprehensive rules.
The Regulation stipulates that employees are entitled to special remuneration for IP objects in addition to their regular salary. Remuneration amount and payment terms are to be negotiated between the parties. Nonetheless, the recent legal amendments allow employment agreements to specify that such remuneration is included in the salary, relieving the employer of any further payment obligations.
Thus, it became of utmost significance to address the ownership of the patrimonial rights over the employees-generated IP objects, as well as the special remuneration thereby applicable. Employment contracts or internal policies approved by employers play a crucial role in defining such aspects.
Software Ownership
Another important amendment introduced by the Copyright Law refers to ownership of the IP rights over software developed by the employee. As opposed to the default rule of patrimonial rights over IP objects being vested with the employees, creations such as software follow a different arrangement. Under the Copyright Law, patrimonial rights over software created by one or more employees as part of their duties or following the employer’s instructions are per se held by the employer.
Thus, the current legislation of the Republic of Moldova sets up straightforward rules as to the ownership of IP rights over creations developed by employees. However, these rules may be adjusted and tailored through employment contracts or internal policies to meet the specific needs of both employers and employees. Awareness of such provisions and proactive management of these rights are essential for fostering a mutually beneficial working relationship.
By Doina Doga, Head of Labor, ACI Partners
This article was originally published in Issue 11.10 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.
