The legal protection of inventions has always been important to inventors because of the rights and exclusivity it confers. However, under certain circumstances, the Turkish Industrial Property Law No. 6769 (“Law“) grants rights to the employer of an inventor, taking into account the fact that the employer has contributed to the creation of the invention by providing opportunities and making investments.
In Turkey, the main legislation that governs the rights, obligations and disputes arising from employee inventions are the Law and its secondary legislation, the Regulation on Employee Inventions, Inventions Created in Higher Education Institutions, and Inventions Created in Publicly Funded Projects.
According to the Law, an employee is an individual who (i) is in the service of another party by virtue of a private law contract or similar legal relationship and (ii) is under the personal obligation in relation to that legal relationship to perform a specific work assigned by their employer.
The Law classifies employee inventions in two main categories, namely “in-service inventions” and “independent inventions”. While the Law refrains from providing a specific definition for independent inventions and refers to them as “inventions other than in-service inventions”, it defines the in-service invention as “an invention that is based on an employee’s work that is required to be performed in an institution or a public administration; or an invention that is substantially based on the experience and work in an institution or a public administration and is made in the context of labor relations”.
For both types of employee invention, it is important to determine who holds the rights to the resulting invention.
Rights to In-service Inventions
According to the Law, if an employee makes an in-service invention, they are obliged to notify their employer in writing without delay, and the employer may claim full or partial rights to the invention. There are, however, a number of conditions for such a claim.
In order to claim rights to the employee invention, the employer must notify the employee in writing, within four months as of the date of receiving the employee’s notification. If the employer does not notify the employee within this period, or if the employer notifies the employee that it does not claim any rights, the employee’s invention acquires the status of an independent invention.
If the employer claims full rights to the employee’s invention, all rights are transferred to the employer when the notice is delivered to the employee. In this case, the employee may claim compensation from the employer for the use of the invention.
On the other hand, if the employer claims partial rights to the employee’s invention, the employee’s invention still acquires the status of an independent invention; however, similarly to claiming full rights to the employee’s invention, the employee has the right to claim compensation from the employer for the use of the invention within the scope of partial rights.
Rights to Independent Inventions
According to the Law, if an employee makes an independent invention in the course of employment, the employee is obliged to notify the employer immediately. It is important to note that the employee has no obligation to notify the employer, if the employee clearly invented something outside of the employer’s field of activity.
The Law also grants the employer the right to object to the independence of the invention by means of a written notification, within three months as of the date of the employee’s notification.
Before utilizing the invention during the employment relationship, the employee is obliged to make an offer to the employer to enable the employer to make use of the invention under favorable conditions without granting full rights, if the independent invention is within the business’ field of activity, or if the business is making serious preparations to operate in the field to which the invention relates.
By failing to respond within three months from the date of receiving such notification, the employer loses the priority right in the matter. If the employer accepts the offer, but does not agree with the prescribed conditions, in other words, if the parties cannot agree on the right ownership of the invention, the right ownership is determined by the court of law.
In summary, the nature of the invention is important in determining who owns the rights to an employee’s invention. Once the nature of the invention has been determined, the obligations of the employee and the employer must be met. Failure to do so may result in loss of rights to the invention.
Authors: Hatice Ekici Tağa, Ebru Gümüş Karasu, Göksu Tuğrul