The New Regulations Regarding Employee Inventions within the Scope of Industrial Property Law 28 September 2017

With the new Industrial Property Law numbered 6769 which is enacted on 22.12.2016 and published in the Official Gazette numbered 29944 and dated 10.01.2017 (“IPL”), regulations regarding patents, trademarks, geographical indications and designs are codified into one document instead of former separate statutory decrees. With this regard, IPL has adopted some revised provisions on patents, trademarks, geographical indications and designs.

IPL, under which Turkish Patent Institute (“TPI”) became Turkish Patent and Trademark Office, brought many modern regulations in accordance with European Union Law and other international treaties and documents Turkey has signed.

Under the “Decree-Law No: 551 pertaining to the protection of patent rights” (“Decree-Law”), employee inventions were classified as service inventions or free inventions, over which the employer may claim tangible rights if it is a service invention made by the employee during the term of his employment, in a private enterprise or public authority, while performing, as of his obligation, the task he has been assigned to or which are based to a great extent on the experience and work/activity of the private enterprise or public authority; or if it is a free invention, in which the invention falls within the field of activity of the employer's enterprise or where the employer’s enterprise is making serious attempts to become active in the field of the invention.

With this regard, the employee inventions are classified as service inventions or free inventions in Article 113 of IPL as well and their definitions are kept as the same.

On service inventions, the employer has right to claim full or partial tangible rights in exchange of an appropriate remuneration upon the notice of the employee in which he has to disclose the technical problem, its solution and the way of the realization of the service invention. In case of having free invention, the employee shall also be obliged to notify the employer of the invention to let employer assess whether it is in fact a free invention.

Although the main sense of the regulations is kept under IPL, it brought many changes such as determining the amount of the abovementioned appropriate remuneration, the duty of the employer to apply TPI for a patent and its consequences or the arbitration process to solve disputes regarding the payment for tangible rights in terms of amount and method and other specific regulations regarding employee inventions in public authorities.

In consideration of the above given explanation, it will be beneficial to check the current employment contracts of the companies if any of the provisions on employee inventions is against the provisions of IPL or to the detriment of the employee, as such provisions shall be considered as null and void. Within this respect, there may be need to revise the employment contracts in order to avoid future conflicts between the employer and the employee. Therefore; it is very important for the companies to have legal support from professionals who have extensive expertise in the area of intellectual property and relevant legislation in order not to be faced with unexpected situations.

Türkçe Versiyonu İçin

http://www.kasaroglu.av.tr/tr/sinai-mulkiyet-kanunu-kapsaminda-calisan-buluslari

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