Amendments to the Patent Law in the Part Relating to Inventions Arising From the Employment Relationship
Publisher: Bojović Drašković Popović & Partners
On 17 September 2019, the National Assembly of the Republic of Serbia adopted the Law on Amendments to the Patent Law (Zakon o izmenama i dopunama Zakona o patentima, „Official Gazette of the Republic of Serbia”, no. 66/2019) ("Law") that entered into force on 26 September 2019. The Law improves the legal framework primarily in the field of protection and exploitation of inventions arising from the employment relationship.
The Law specifies certain terms, so inter alia it is prescribed that an invention arising from the employment relationship represents an invention created by the employee by performing the tasks specified in an employment agreement between the employee and the employer or created in accordance with a special act of the employer that regulates the research and development tasks.
It is also specified that an employee is a natural person who performs work for an employer under an employment agreement.
The Law further stipulates that the employee and the employer agree on the amount and manner of payment compensation to the employee. Also,
in cases where the compensation is not already determined by a general act or agreement, the criteria that should be taken into account in determining the compensation to employees are prescribed.
The employee who creates an invention arising from the employment relationship is obliged to submit a written report to the employer immediately upon the invention is created. The Law specifies the content of such a report and extends the period from two to six months, in which the employer, based on a duly received report, informs the employee in writing whether the employer believes that the invention belongs to the group of inventions arising from the employment relationship. It is further defined that if the invention created by the employee does not belong to the category of the invention arising from the employment agreement, the right to protection belongs to the employee. If there is no agreement between the employer and the employee related to which category the invention belongs to, the competent court will decide on that.
Deadline for submitting invention application by the employer; mutual cooperation between the employer and the employee
The Law prescribes a new solution if the employer decides to submit an invention application, and in this case, the employer is obliged to do so within a reasonable time, while the previous legal solution prescribed a time limit of six months for submission of application, which in some cases was not adequate. The novelty is also the provisions that stipulate the obligation of both the employer and the employee to inform and cooperate with each other regarding the protection of the invention in question at home and/or abroad.
Obligation to keep business secret
In the cases of an invention arising from the employment relationship, in communication with third parties the employer and the employee are obliged to harmonize their activities with the regulation governing the protection of business secrets.