IP Rights to Employee Creations

Question 1

Who owns the IP rights to employee creations under Russian law?

Answer 1

Generally, an employer obtains proprietary (exclusive) rights to the IP created by an employee strictly (строго) within their employment duties. Therefore, to ensure that all proprietary rights are owned by the employer, it is essential to ensure that employment agreements and other relevant documents with Russian developers are drafted in such a way that all proprietary rights in the IP created by the developers are fully and duly vested in the employer and are consequently wholly owned by the employer without any limitations or encumbrances.

Question 2

IP created by an employee strictly (строго) within their employment duties

Answer 2

IP созданная работником строго в пределах его трудовых обязанностей

Question 3

Rights are duly vested

Answer 3

Права должным образом возложены на работодателя (принадлежат работодателям)

Question 4

Encumbrances

Answer 4

Обременения

Question 5

What are the rules for the remuneration of employees who create IP assets?

Answer 5

The amount of remuneration for the creation of IP and its payment to an employee should be established in an agreement between the employee and the employer (e.g., an employment agreement). If the employee and employer fail to reach such agreement, the amount of such remuneration and other payment terms may be established by a court at the request of either party.
The Russian government adopted rules on the calculation of remuneration payable to employee inventors who have created patentable solutions, including an invention, utility model or industrial design:
* 30% of the employee’s average monthly salary (for the last 12 months preceding the date of patent application filing) for the creation of an invention
* 20% of the employee’s average monthly salary (for the last 12 months preceding the date of patent application filing) for the creation of a utility model or an industrial design
In addition, the employee inventor is entitled to receive:
* an average monthly salary for each 12-month period during which the invention, utility model or industrial design is used by the employer (from 2021, this remuneration will increase: three average monthly salaries for an invention, two average monthly salaries for a utility model or industrial design)
* 10% of the licensing fees the employer receives under a patent license
* 15% of the remuneration received by the employer as consideration for the assignment of the patent
These rates of remuneration apply in the absence of a specific agreement between the employer and employee covering these issues.

Question 6

remuneration payable to employee inventors

Answer 6

вознаграждение подлежащее уплате работнику-изобретателю

Question 7

preceding the date of patent application filing

Answer 7

предшествующий дате подачи заявки на выдачу патента

Question 8

average monthly salary

Answer 8

среднемесячная зарплата

Question 9

How to ensure that rights to employee creations are vested in the
employer?

Answer 9

To ensure that all rights to IP created by employees are vested in the employer, the latter should take the following steps:
1) prepare and execute an employment agreement and other employment documents (i.e., job descriptions) to ensure that any IP that has to be, or might be, created by an employee falls within the scope of their employment duties
2) ensure that the employment agreement envisages that remuneration for the creation of IP is included in the employee’s salary or, alternatively, the employee and the employer may enter into a stand-alone agreement on the remuneration. It is highly advisable to enter into such agreements with employees who are likely to create patentable solutions to avoid the application of the rules on remuneration established by the Russian government
3) implement timely measures provided by the Civil Code to keep the ownership of the IP created by its employees (i.e., keep the created IP confidential, file a patent application with Rospatent and start to use the created IP)

Question 10

an employment agreement

Answer 10

трудовой договор

Question 11

to execute an employment agreement

Answer 11

заключать трудовой договор

Question 12

job descriptions

Answer 12

должностные инструкции

Question 13

IP that has to be, or might be, created by an employee falls within the scope of their employment duties

Answer 13

ИС, которая должна быть или может быть, созданная работником подпадает в объем их трудовых обязанностей

Question 14

to envisage

Answer 14

предусматривать

Question 15

the employment agreement envisages

Answer 15

трудовой договор предусматривает

Question 16

a stand-alone agreement

Answer 16

отдельное соглашение

Question 17

rights to IP created by employees are vested in the employer

Answer 17

Права на ИС, созданную работником, принадлежат работодателю

Question 18

to implement timely measures to keep the ownership of the IP

Answer 18

Своевременно предпринято меры по сохранению владения ИС