The Supreme Court clarifies the content of the Employee Inventions Act



Published 03 November 2020
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The right to obtain a patent for an invention arises in the person who has made the invention. This also applies in employment relationships. However, the Employee Inventions Act (the "EIA") stipulates that the inventor's employer, pursuant to certain requirements, may demand to acquire the invention/make use of the invention. Pursuant to the EIA, the employee has to notify the employer if the employee makes an invention. Upon notification from the employee, the employer must within four months notify the employee, if the employer wants to acquire the invention/make use of it. Upon such acquisition, the employee is entitled to a mandatory reasonable fee pursuant to the EIA. Pursuant to the EIA, such acquisition may take place in accordance with said notification procedure or "on another basis".

In a recent judgement from the Norwegian Supreme Court (HR-2020-2017-A), the Supreme Court dealt with the question of whether or not an employer, the University of Oslo, had acquired the right to  a research fellow's invention. If so, the employee would be entitled to the mandatory reasonable fee.

The Court of Appeal had concluded that the research fellow was a co-inventor of an invention made as part of the research fellow's doctoral dissertation. With assistance from one of the research fellow's supervisors at the university, a Swedish company had filed patent applications and acquired patent to the invention. The research fellow had not been aware that her work had been used in connection with the Swedish company's patent applications, and brought the case before the courts with one of the claims being a claim for remuneration pursuant to the EIA.

Neither the research fellow nor the university had sent notifications pursuant to the notification procedure in the EIA. Accordingly, the question before the Supreme Court was whether the university had acquired the right to the invention "on another basis".

The Supreme Court stated that, obviously, an agreement between the employee and the employer may suffice as ground for a claim for remuneration pursuant to the EIA. Even though the Supreme Court did not exclude other basis for acquisition, it stated that it is required to exist a basis that provides the employer with an entitlement to the invention as such. According to the Supreme Court it is a prerequisite for such a basis for acquisition to exist, that the employee has accepted or approved the employer's acquisition; in other words, waived his/her right to the invention.

If the employee's acceptance/approval does not exist, then the employer's use of the invention is unlawful. Such use may give the employee a tort claim for compensatory damages, but not a claim for remuneration pursuant to the EIA.

In conclusion, the Supreme Court stated that it is required that both parties' actions show that they are bound to transfer the right to the invention from the employee to the employer, and that the question if the parties are bound to such transfer must be determined pursuant to ordinary contract law. Based on the concrete facts of the case, the Supreme Court did not find that the university had acquired the employee's rights to the invention. The employee was thus not entitled to the EIA mandatory fee.

The Supreme Court's judgment also shows the importance of establishing satisfactory routines for managing intellectual property rights. Such routines are not only important to establish, but also to implement by making them sufficiently known by the employer's representatives and the employees in any organization dealing with intellectual property rights. This is important as a measure both in order to avoid intellectual property disputes, and in order to ensure that the company's existing and potential intellectual property rights remain within the company.