The rights of inventors of inventions are exhaustively listed in Article 8 of the Act of 30 June 2000 on Industrial Property Law (IPL). The inventors of the invention have the right to:
- obtain a patent;
- salary;
- author ties in descriptions, registers and other documents and publications.
DEFINITION OF THE CREATOR
An inventor, within the meaning of the law, is any person who has made an intellectual contribution to the creation of an invention. Establishing the work of a given person is a factual determination; The right to be an author cannot be acquired by way of contractual provisions.
A person who performs purely auxiliary or technical activities or otherwise reproduces only the tasks entrusted to him or her of a nature and content specified by the ordering party is not considered to be an author. Nor is a person who finances or manages a group of creators an author. The key is therefore the creative contribution of the person participating in the invention, which is reflected in the invention.
A co-inventor of an invention is the one without whose direct participation the invention would not have been made, because his thought was necessary for the final solution of the problem solved by the developed invention.
RIGHT TO PATENT
Pursuant to Article 72(3) of the IPL, in conjunction with Article 197 of the Civil Code, it is assumed that with the creation of an invention, each of the co-inventors obtains an equal share in the right to obtain a patent for the invention, and then (after the patent is granted) in the right to the patent, unless the right to the patent is vested – by operation of law, or a contract concluded by the authors – to another third party, e.g. an employer or a contracting authority, which results in the creation of a patentable invention. Therefore, a distinction is made between primary acquisition of the right to a patent and secondary acquisition (by a person other than the inventor).
RIGHT TO REMUNERATION FOR THE USE OF AN INVENTION
The right to remuneration is related to the justified (and recognized by the legislator) need to grant compensation to creators for the effort put into creating a solution with a specific commercial (economic) value.
Pursuant to Article 22 of the IPL, the inventor of an invention has the right to obtain remuneration for the market use of his invention by the entrepreneur who – under special provisions – has the right to obtain a patent (the parties may mutually exclude this right by way of an agreement). This applies both to employers who have the original right to inventions created as part of the performance of the author’s employment obligations and to entrepreneurs with whom the inventors enter into a civil law contract.
The Industrial Property Law Act assumes that – unless the parties have agreed on the amount of remuneration – its amount is determined “in fair proportion” to the benefits obtained by a given entrepreneur/employer for the use of a given invention. When determining the amount of remuneration due to the creator, all the circumstances in which the invention was created are taken into account, including the participation of a given entrepreneur in the development of a given solution.
The author’s right to remuneration provides the basis for formulating a claim for payment of remuneration. Remuneration can be claimed in a court proceeding before the District Court in Warsaw (Division XXII for intellectual property matters). This possibility is conditioned by the existence of two conditions:
- commencement of commercial use of the invention by the entrepreneur (sale of products implementing the patented solution)
- obtaining financial benefits by the entrepreneur in connection with the use of the invention.
It is the author’s duty to demonstrate, by means of material evidence, each of the above-mentioned circumstances, which is often an extremely demanding and difficult task.
The amount of remuneration must correspond to the “fair proportion”, which should be understood as both the actual contribution of the inventor to the development of a given invention, the share of the invention in the net value of the product implementing the invention, and finally – a fair percentage of benefits (net profits) obtained from the sale of the product implementing the given solution.
It should be emphasized that the inventor’s right to remuneration for the use of an invention is granted regardless of whether the invention has been patented or applied for patenting. It is enough that a given solution meets the definition of a patentable invention. When determining the correct proportions, the court adjudicating has the right to make its own, free (although not arbitrary) determinations.
THE RIGHT TO MENTION THE CREATOR IN DESCRIPTIONS, REGISTERS
Creativity is a personal right of a person (natural person) protected by the provisions of the Civil Code and (additionally) the provisions of the IPL. In the event of a dispute as to the authorship of an invention, such cases are resolved by a civil court, by way of a separate action. It is prohibited and sanctioned by law to attribute the authorship of a given invention to oneself, as well as misleading third parties as to the authorship of a given person.
The author’s right to be mentioned in registers and other documents applies to all public and legal activities in which a given solution is disclosed. The inventor is indicated by name and surname in the application for patent of a given solution, as part of an application submitted to the Patent Office of the Republic of Poland, as well as similar applications filed abroad.
The fact that the inventor/co-inventors are listed in the registers and the related presumption of the financial share (right to) of a given invention is not tantamount to the same share of the inventor in the right to remuneration for the use of the invention by the entrepreneur. The presumption of fractional co-ownership does not preclude the inventor’s obligation to demonstrate in what actual percentage his work constitutes an actual contribution to the market value of the product in which the invention was used. An invention does not have to equal a product, it can be a fraction or a larger part of it. Therefore, the author’s personal rights and economic rights are not identical. Any findings in the scope requested by the author are made by the court in a court proceeding.
Author: Helena Gajek
