EMPLOYEE INVENTIONS AND THEIR REMUNERATION
As a result of rapidly developing technology, employee inventions have become a very important issue in recent years. Accordingly, a need to regulate employee inventions has arisen. Employee inventions are regulated under the Industrial Property Code (‘‘IPC’’)(in Turkish, ‘‘Sınai Mülkiyet Kanunu’’), which was published in the Official Gazette dated 10 January 2017 numbered 29944 and the Regulation on Employee Inventions, Inventions Made Within the Higher Education Institutions and Inventions Made Within the Projects Supported by the Public Authorities, which was published in the Official Gazette dated 29 September 2017 numbered 30195 (‘‘Regulation’’) (in Turkish, ‘‘Çalışan Buluşlarına, Yükseköğretim Kurumlarında Gerçekleştirilen Buluşlara ve Kamu Destekli Projelerde Ortaya Çıkan Buluşlara Dair Yönetmelik’’).
As per the IPC, employee inventions are classified in two groups as ‘‘service invention’’ and ‘‘free invention’’. The inventions discovered, while carrying out the duties that the employee is responsiple for under his/her employment or the inventions discovered by the employee majorly based on the experiences and the works of the company or the public agency shall be deemed as service inventions. Meanwhile, free invention is defined as the invention that does not fall under the scope of service inventions.
In terms of service inventions, the employee is obliged to notify the service invention that he/she discovered promptly to the employer in writing. The employee is also obliged to explain the technical problem that the invention was based on, the solution brought to that and the way the invention was
discovered. The employee is obliged to keep the service invention confıdential.
The employer can make unlimited or limited claim on the invention within four
(4) months following the said notification. When the employer makes an unlimited claim, all the rights regarding the invention shall be transferred to the employer. But if such a claim is not made or no claim is made by the employer within this period, the service invention shall convert to free invention.
If the the employer makes a limited claim, the employer will have utilization right over it. In the event that the utilization of the employer prevents the employee to make use of his/her free invention in any ways, the employee may ask the employer to make an unlimited claim over the invention or cease the utilization.
It should be well noted that, if the employer makes an unlimited claim, then the employer is obliged to make a patent application to the Turkish Patent Institution(‘‘Institution’’). Employer can avoid from such an application, if only it is required in order to protect the trade secrets of the company.
According to the IPC, the articles of the IPC are mandatory and cannot be altered in a manner that is against the interests of the employees. With regard to the agreements for employee inventions, even though the provisions of the agreement are in line with the mandatory articles of the IPC, if these provisions are considerably against equity, then these provisions shall be deemed invalid.
Renumeration For the Invention
In case the employer makes an unlimited claim on the invention, the employee may ask for a reasonable renumeration to be paid to him/her. Likewise, if the employer utilizes the invention based on a limited claim, the employee will be entitled to ask for a reasonable renumeration to be paid to him/her. When calculating the economic value of the invention, the duty of the employee at the company and the contribution of the company to the invention shall be taken into consideration. The renumeration tariff of the employee inventions and the payment details are determined under the Regulation.
Encouragement Award
Without prejudice to all rights of the employee, aside from the renumeration to be paid as aforementioned, if there is an unlimited claim in question, the employer has to pay an encouragement award to the employee which is a one time payment and cannot be less than the minimum monthly wage, within two months subsequent to the delivery of the procedural conformity notice to the employer from the Institution regarding the patent application of the invention.
Dispute Resolution Method
In the event that the parties cannot reach an agreement with respect to employee inventions, the dispute shall be resolved through arbtitration for which the procedure is set forth in the Regulation.
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