Melike Orhay – July 2021 – When a principal gives instruction for a job that implies an invention or creation, he shall wish to claim the corresponding intellectual property rights; especially if the inventor is a payroll employee, paid for the specific task. However, under Belgian law, the intellectual property rights (including the rights to exploit, sell or commercialize the creation) shall not automatically belong to the principal-employer. Certain (preferably anticipatory) steps shall need to be taken.
(labour) contract with transfer of rights
The most favourable option for the principal is to agree upon an explicit transfer of the intellectual property rights involved from the employee to the employer. “Explicit” implies in writing, for example in the labour contract itself, within the boundaries of Belgian patent law.
The written clause should describe the scope, modalities (term and territory, for example) and conditions (such as an additional remuneration) of the transfer.
Transfer clauses with general wordings may be considered to violate the principle of freedom of labour and freedom of trade and industry. In case of doubt or conflict, (labour) courts adopt a rather restrictive interpretation to the benefit of the employee.
(labour) contract without transfer of rights
Very often, however, nothing is provided in the written labour contract in this respect.
This can be the case because the project or invention was not foreseen yet when parties started working together. At a certain moment, as part of the job description and specific tasks it entails, the employee can give rise to an invention.
It is also possible that the invention was an incidental occurrence, result of both employer and employee occasionally joining forces, but not specifically within the scope of the employee’s job functions, neither specifically foreseen.
In this case, a double distinction regarding the inventions should be made to determine who – employer or employee – acquires the intellectual property rights of the invention.
First option: the service invention
A service invention is made by the employee in performance of his employment contract and as part of his job description and tasks. In this case, the employer acquires the intellectual property rights of the invention, since the invention is considered a result of the labour of the employee for which he receives a wage, paid by the employer. Important to note is that this only concerns the so called economic intellectual property rights, i.e. the right to exploit and commercialize the invention. In any case, the inventor – the employee – stays entitled to the moral intellectual property rights, i.e. the recognition of his authorship.
Second option: the dependent invention
A dependent invention is an occasional invention, created outside the scope of the official job duties of the employee, (so not in performance of the labour contract), but with the use of the employer’s resources. For example, in the employer’s workspace, with his machinery, materials or know-how. So, with a specific significant contribution of the employer.
The position of the majority is that all intellectual property rights (i.e., the economic and moral ones) belong to the employee, because there is no link with the labour contract as such. Some would argue that the employer is entitled to a compensation, for his (material or intellectual) contribution. However, the courts will determine to whom the property rights for the invention actually belong, depending on the concrete circumstances.
So specifically for the dependent inventions, it becomes very relevant to foresee an explicit contractual arrangement regarding the intellectual property rights, even after the signing of the labour contract or after the invention has already been created.
This secures the employers’ inventions, market strategies and commercial projects and reduces the risk of possible future legal disputes considerably.