Invention assignement agreement
90% of patented inventions are made by employee inventors. Depending on the conditions under which the employee’s invention was conceived, the rights to the invention, and thus the choice of whether or not to file a patent, belong either to the employee or to the employer.
Who owns the invention?
The law distinguishes three categories of employee invention:
- “Mission inventions”: the employee inventor had an inventive mission in his work contract (Example: R&D engineer), the invention automatically belongs to the employer and must pay an additional remuneration (a bonus) to the employee inventor
- “Attributable non-mission inventions” : the employee did not have an inventive mission in his work contract (e.g. salesman, HRD) but developed an invention in the course of his work, the employer can claim the invention and the rights attached to it in exchange for the payment of a “fair price”
- “Non-attributable inventions”: the employee did not have an inventive mission in his employment contract and developed an invention outside of his duties (e.g. at home on weekends); he remains the full owner of the rights attached to his invention, the employer cannot attribute it to himself.
In any case, the employee has the obligation to declare any invention he makes in order to inform his employer and to allow the latter to determine the rights he considers to hold on the invention. The purpose of the declaration is to define, in the long run, who can file the patent: the employee or the employer.
The case of non-salariedinventors such as freelancers or interns should not be overlooked either. In the case of the provider, it will be necessary to pass by a contract of transfer of the invention towards the company.
For the intern/trainee, the situation has changed recently. If previously it was necessary to go through an assignment of the invention, today the same regime as the salaried inventor with inventive mission applies. Thus, the trainee placed under the responsibility of the company by an internship agreement including an inventive mission and receiving a compensation(financial or material) for the realization of his mission will be considered as an employed inventor. His invention will then be directly attributed to the company.
Why is employee invention policy important?
The issue of employee inventions should not be overlooked as it can have significant financial consequences. Indeed, if the additional remuneration or the fair price is not paid and the salaried inventor leaves the company (redundancy, retirement, etc.), he may come to claim much higher sums than those that would normally have been foreseen beforehand.
At YesMyPatent, we are committed to guiding you on how to comply with these legal requirements. We propose to carry out an entire study on the policy of employee’s inventions adapted to your company and to draw up for you the employment contracts and endorsements adapted for your employees.