Inventions by employees in the employment relationship
In today's world of work, where innovation and creativity play an increasingly important role, numerous legal issues arise regarding the ownership of new inventions and designs created by employees during their employment. The law and case law distinguish between different categories of such works by employees: Task inventions, occasional inventions and non-work inventions. Depending on the allocation, the ownership rights to the works differ, as do any claims for remuneration on the part of the employee.
The following article examines in particular the circumstances in which the employer is considered the owner of works created in the context of the employment relationship and in which cases the employee is entitled to recognition and possible compensation.
Rights to the work result
If something new, for example a new object, is created as a result of the work performed, this object is in principle the property of the processor. As the employer has initiated the employee's activity at his own risk, he is considered to be the processor and therefore the creator of the newly created object. Only in exceptional cases does no new ownership of the object arise if the material used for the new object is more valuable than the work expended on it. In the employment relationship, however, it is generally assumed that the employer is also the owner of the material used, which is why the employer usually remains the owner of the new item. In principle, therefore, everything that the employee produces in the course of his contractual activity must be handed over to the employer.
Rights to inventions and designs in the employment relationship
An invention only exists if it is based on a creative idea that is not already obvious to any well-trained specialist and realizes a clearly recognizable technical advance. According to the case law of the Federal Supreme Court, the concept of inventiveness only begins beyond the zone that lies between the previously known state of the art and that which the average skilled person in the relevant field can further develop and find on the basis of his knowledge and skills (BGE 123 III 485, E. 2a). The invention must be new for the employer's company, i.e. it must differ from the existing state of the art within the company.
Design is defined as the creation of products or parts thereof that are characterized by the arrangement of colors, lines, surfaces, etc.
The protectability of inventions and designs under patent or design law is not a prerequisite in employment law.
It is also important to note that inventions and designs do not necessarily have to be created during working hours or at the workplace. However, they must be completed during the employment relationship, as rights to inventions can only arise once they have been completed. The invention is completed when a skilled person is able to achieve the desired result based on the information provided by the inventor.
Task invention/design
Task inventions/designs, also known as service inventions/designs, are deemed to exist if the employee makes them in the course of their "official duties" and "in fulfillment of their contractual obligations". In order to decide whether the employee has made the invention or design in the course of his employment, it is not decisive whether he made it during actual working hours or at the actual place of work, but only whether a close logical connection between the employment and the invention or intellectual product can be affirmed. The nature of the invention or design must also have arisen in fulfillment of the contractual obligation. In other words, it must originate from the employee's particular area of activity and field of work and thus arise from the activity for which the employee was employed.
If, for example, the development work on a technical system is part of the employee's area of responsibility, the invention also qualifies as a task invention if the employee has deviated from the ideas known in the company and has found a different solution. The same legal situation applies if an employee has to produce the mold material as a caster and happens to find a better mixture.
The task invention or task design "belongs" to the employer. By law, the employee is not entitled to any special remuneration. The task invention or task design is part of the contractual work performance for which the employee is compensated by the normal salary and any special remuneration, such as bonuses and profit share.
Occasional inventions (Art. 332 para. 2 CO):
Occasional inventions are deemed to exist if the employee invents something in the course of his employment (i.e. a factual connection between the invention and the work activity is required), but not in fulfillment of his contractual obligations (i.e. he develops an idea without having been employed to do so, i.e. without fulfilling a contractual obligation). In principle, the employee is entitled to the rights to occasional inventions. However, the employee has a duty of loyalty under employment law to inform his employer. A prior written agreement between the employee and employer is also permissible, which can secure the employer the right to the invention or design.
The question of whether the invention was made in the course of the employee's work must be based on the employee's specific field of activity, not on the sphere of activity of the entire company. The invention must, by its nature, originate from the employee's particular area of activity and field of work.
Procedure for occasional inventions (Art. 332 para. 3 CO):
The employee who develops a contractually reserved invention or design pursuant to Art. 332 para. 2 CO must inform the employer in writing. The employer must inform the employee in writing within six months whether it intends to acquire the invention or design or whether it will release it to the employee. If the employer releases the invention, the employee can dispose of it and also use it commercially. However, the employee may not compete with his employer.
If the invention is not released, the employer must pay the employee appropriate compensation, the amount of which depends on the economic value, the employer's involvement, the involvement of other persons, the use of company facilities, the employee's expenses and his position in the company. The compensation may be a one-off payment or periodic payments.
Non-work-related invention (Art. 332 para. 3 CO):
If the employee makes inventions or designs that lie outside the scope of his contractual activities and have no material connection to the work activity, these are non-work-related inventions and designs. In such a case, although the employee originally establishes his right to the intellectual property, he may be required by his duty of loyalty to inform the employer of this or to offer to acquire this intellectual property. The non-competition clause must also be observed here.
By agreement with the employee, however, the employer can also have the rights to free inventions transferred to the employee. However, such an agreement must not be contrary to morality and must not excessively impair the employee's (economic) freedom; furthermore, the inventions covered by the agreement must be sufficiently definable. Finally, the employee must be granted an appropriate remuneration in accordance with mandatory law, analogous to this para. 4.
Conclusion
The statutory regulations and case law aim to strike a balance between the interests of both parties. At a time when innovation has a significant impact on business success, it is crucial to have clear rules that both encourage employee creativity and protect employer investment. It is important that both sides know their rights and obligations in order to avoid potential conflicts and create a productive, innovative working environment.
Balthasar Wicki and Vivien Keiser will be happy to answer any questions you may have about employment law or the law on inventions.