Employee inventions are subject to the Act on the Right in Employee Inventions¹ in Finland. The Act governs the principles relating to when and under what conditions an employer is entitled to obtain the rights to an invention made by an employee in the course of the employee's tasks and duties. The Act is partly compulsory and also governs:
- invention remunerations;
- employee inventors' rights and obligations;
- employers' rights and obligations; and
- claims and disputes relating to employee inventions.
This article, the first in a series on issues relating to employee inventions, focuses on the transfer and assignment of rights from an employee inventor to the employer.
Rights to inventions
According to article 4 of the Act, the rights to an invention belong to the inventor, even when the invention has ensued in the course of the inventor's employment relationship. However, the employer is entitled to acquire the rights to the invention in certain circumstances. These circumstances specifically include where the invention has arisen as a result of:
- an employee's activity in the performance of their duties; or
- an employee's experience gained in the enterprise or institution of their employer or in an enterprise or institution belonging to the same consolidated corporation.
In these circumstances, the employer may acquire the rights to the invention, in whole or in part, if the use of the invention falls within the field of activity of the employer's enterprise or of an enterprise belonging to the same consolidated corporation.
Also, if the invention is the result of a task assigned to the inventor employee more specifically, the employer may acquire the rights to the invention. This applies even if the use of the invention is not within the field of activity of the employer's enterprise or of an enterprise belonging to the same consolidated corporation.
Occasionally, inventions may arise under circumstances that do not fall under the conditions referenced above. In such cases, if an invention has been conceived in connection with the employment circumstances other than those referred to above, the employer is entitled to acquire the right to use the invention provided that the use falls within the field of activity of the employer's enterprise or of an enterprise belonging to the same consolidated corporation. Should the employer wish to acquire a more substantial right to an invention, the employer has priority to acquire such right by agreement with the employee.
Acquiring and transferring rights to inventions
Careful attention should be paid to the time limits that apply to acquiring the rights to an invention from an employee inventor. If an employer wishes to acquire the rights in an invention, the employer must notify the employee in writing that it will claim a specified right in the invention no later than four months from the date on which the employer was notified (or otherwise became aware) of the invention.
While the Act states that an invention notification should be given in writing, it is not compulsory in this regard. Therefore, the status of the right to an invention may remain unclear. Setting up proper processes to handle employee inventions within the company is of utmost importance to avoid unclear situations with acquiring rights or, in the worst-case scenario, losing rights. In addition, if the employer wishes to exercise the priority to negotiate, this must be done within the same time limit.
Written decisions to acquire rights are also recommended, although the Act is not compulsory in this regard either. The decision should properly identify the conditions under which the invention has arisen and the extent of rights the employer is acquiring. It is recommended that the decisions are accompanied with a transfer and assignment document to ensure that the rights to an invention are transferred and assigned from the employee inventor to the employer expeditiously.
Considering the partially compulsory nature of the Act – and especially the fact that the rules regarding notifying inventions and acquiring the rights to inventions are not compulsory – it is strongly recommended that employee invention processes are carefully established and implemented to manage inventions in Finland.
Attention must be paid in particular to time limits that apply to acquiring rights to an invention from an employee inventor to ensure that that the rights are properly transferred and assigned to the employer. Written processes are always recommended.
Suvi Julin works in Berggren as a Lawyer, Patent Attorney, European Trademark and Design Attorney. Suvi has wide-ranging experience in the field of intellectual property and technology law. Suvi advises clients on a variety of contentious and non-contentious intellectual property matters including trademarks, designs and patents as well as in copyright, contractual, employee invention and privacy matters.