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Amendments to Law on Patents - Invention from the Employment Relation

Amendments to Law on Patents - Invention from the Employment Relation

Serbia
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On 26th September 2019 the Law on Amendments to the Serbian Law on Patents came into force.

These Amendments to the Law on Patents are related mainly to the inventions made in the course of employment.

Invention from the employment relation:

Invention from the employment relation, in accordance with these amendments, is invention that an employee created performing work tasks determined under an employment agreement or by a separate act of the employer in regard to the research and development, which prior to these amendments was not specified and other agreements under which one person was engaged were also taken into consideration.

In addition, the invention created using resources, knowledge, training or resources provided by the employer is considered as invention from the employment relation, whether it is created during the employment relation or one year after termination of the same.

Protection of the invention from the employment relation created within one year after termination of the employment relation:

By these amendments of the Law on Patents, the employer is enabled to protect the invention that is created within one year after termination of the employment relation, which was not the case previously.

Compensation to the employee in regard to the invention from the employment relation:

The criteria for determining the amount of compensation to an employee for the invention from the employment relation, as well as the manner and time of the payment of the same, are first to be determined by the employer and employee (by a general act of an employer, employment agreement or by a separate agreement that employer and inventor execute in regard to the particular invention).

In the event that employer and employee have not established criteria by one of the mentioned acts, with these amendments to the Law on Patents it is determined what to take into consideration in each particular case during determination of the compensation:

  1. economic and other contributions resulting from the exploitation of the invention by employers or third parties, with the consent of the employee;
  2. contribution of the employer to the creation of the invention, in particular the funds that are made available to the employee;
  3. individual contribution from each inventor, in the event that several employees created the invention.

The economic effects of exploiting the invention are no longer the only criteria for determining the amount of compensation to an employee, as it was prior to the amendments to the Law on Patents, now they are only one of the criteria.

In the event that, even with application of the criteria from the points 1, 2 and 3, employer or employee do not reach the agreement in regard to the compensation, as per request of an employer or an employee, the competent court shall decide on the amount and the manner of payment of the compensation.

Furthermore, the employee is no more entitled to the compensation in cases of the transfer of the right or assignment of a license for exploiting the invention from the employment relation to the third party by the employer.

Acting of an employee and an employer in regard to the invention from the employment relation:

The content of the report, which an employee who creates the invention from the employment relation is required to submit without delay to an employer, is now determined within the Law.

The employer is now allowed to notify the employee in a period of 6 (six) months, whether the invention is considered an invention from the employment relation or not, counting from the date of receipt of the employee’s report or from the day of the employer’s knowledge of the invention, instead of 2 (two) months period, which was prescribed before the amendments of this Law.

If the employer considers the invention as invention from the employment relation, in accordance with the amendments to the Law on Patents, he has a reasonable time to file an application for the protection of the invention. Previously, this deadline was set at 6 (six) months.. 

By  JPM Jankovic Popovic Mitic

Serbia Knowledge Partner

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