Employee inventions are subject to the Act on the Right in Employee Inventions (656/1967) in Finland (the “Act” or the “Employee Inventions Act”). The Act is compulsory in part and governs rights to an invention, invention remunerations, employee inventors’ rights and obligations, employers’ rights and obligations and related claims and disputes involving employee inventions. In this article, the second in our series of articles on employee invention issues, we will focus on employee inventors’ rights and obligations in Finland.
Rights to an invention
In our first article in the series discussed rights to an invention. To recap, according to Article 4 of the Act, rights to an invention belong to an inventor even when an invention arises during the inventor’s employment relationship. However, the employer is entitled to acquire the rights to the invention in whole or in part if the invention results from an employee’s activity in the performance of his or her duties or is essentially as a result of using an employee’s experiences gained in the enterprise or institution of his or her employer or in an enterprise or an institution belonging to the same consolidated corporation. This also applies when the invention is a result of a task assigned to the inventor employee more specifically.
Obligations of the employee inventor
The Act sets certain obligations to an employee who has made an invention that falls under the scope of the Act. Namely, the inventor must
- Notify the employer of the invention in writing without delay (promptly after the invention has arisen),
- Provide a sufficient level of detail of the invention so that the employer can evaluate the invention and decide if they wish to acquire rights to the invention and all such information that enables the use and exploitation of the invention,
- Provide the employer with information regarding the circumstances under which the invention has been made (if the employer requests the information), and
- Keep the invention confidential during a four-month consideration period of the employer, which starts running from the date of notification.
The Act is compulsory in terms of keeping the invention confidential during the four-month consideration period of the employer. However, although not compulsory as such, other obligations of the employee inventor are well established praxis in Finland. Missing written notifications on inventions are a typical source of unclear situations as it may be unclear when the four-month consideration period of the employer has begun and when the employer should have either given a decision to acquire the rights or to seek extension of the consideration period if needed.
Also, it is generally understood that the consideration period of the employer shall not start running until the inventor has provided sufficient details of the invention so that the employer can properly evaluate the invention and decide if they wish to acquire rights to the invention. If a well-managed process is not in place, tracking this becomes quite difficult both for the employer and the inventor employee.
Rights of the employee inventor
Many of the compulsory parts of the Act are directed to the rights of the employee inventor. Quite surprisingly, there is a compulsory rule in the Act according to which the employee inventor is entitled to file a patent application for the invention if the inventor notifies the employer one month prior to the filing date that he/she intends to do so and ensures that confidentiality obligations are maintained. Although this right is not often exercised, it is something that should be carefully managed in the invention processes.
The employee inventors’ right to remuneration for the inventions to which their employers have acquired the rights to, is also falls under important compulsory sections of the Act. The inventor is entitled to receive a reasonable remuneration and any prior agreement in which the inventor’s’ rights to the remuneration is waived, is null and void by the law.
The inventor is also entitled to raise a court action in a remuneration matter up to ten years from the date on which the employer notified the inventor that they will acquire the rights to the invention. In addition, if a patent application was filed in connection with the invention, the court action may be raised within one year from the grant date (of the first patent), meaning that such a court action could be longer than the standard 10-year period.
They employee inventor may also be entitled to a higher remuneration than he/she has originally received if the circumstances are significantly changed, and the invention turns out to be more valuable than expected.
Finally, the inventor is also protected in situations where the inventor transfers to a new employer. Any agreement made between the inventor and the previous employer regarding an invention is automatically null and void if the agreement is executed more than a year after the employment relationship was terminated.
The Finnish Employee Inventions Act secures inventors’ rights under an employment relationship and the Act can be viewed as being quite pro-inventor. To avoid uncertainty and lack of clarity especially in terms of crucial time limits and to ensure that rights are being properly transferred and assigned to the employer, proper invention management processes should be set up. 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.