The regulation of rights to so called employee inventions can take place both under the Patent Act as well as the Labour Law. To do so under the Patent Act in some way involves confining the regulation to the field of patentable inventions, with those inventions that have not been patented being left out, either due to a lack of patentability requirements or due to this specific protection having been waived. The regulation under the framework of the labour law raises the issue of possible differences in identical cases that affect different parties such as salaried workers versus civil servants and public administration employees, as well as the fact that under these types of rules and courts and tribunals, the tendency has always been to over-protect the worker. As an alternative and possible solution to these options it was suggested to implement it by means of a specific law and in this way avoid the drawbacks of the subject matter framework in some of those areas. However, and despite the numerous criticism received, it was opted to legislate this subject via the Patent Act, as per the current Law 11/1986, of 20 March, as well as the new Law 24/2015, of 24 July.

To put us into perspective lets briefly review the legal rules governing the matter in question. The first rule that regulated this subject in Spain was the 1931 Employment Contract Act, inspired by the German project regarding the 1923 General Contract of Employment Law and, repealed thereafter, by the 1944 Employment Contract Act, which reproduced the content of the 1931 ECA regarding this issue. These first two labour related rules were to distinguish between three kinds of inventions, a) operating or workshop inventions, the ownership of which belonged to the employer as being the one in control of the use of the company elements , raising the issue that they were unpatentable as the inventor had to be named and with this type of invention it was impossible to identify who this was; b) service inventions, ownership of which belongs to the employer but the performing of such being the subject of the work contract. These inventions did not generate compensation for the worker except for when the operating gains were highly disproportionate with regard to the contractual remuneration; c) free inventions, those carried out with the predominating personality of the worker, which raised the issue regarding the possible preferential compensatory rights in favour of the worker.

Later, in the 1967 and 1970 draft bills of the Patent Act, the different types of inventions were maintained on one side although grouping exploitation inventions with service inventions, with both being attributed to the employer, although the latter granted the right to workers to compensation, and the nullity of all workers disclaimers regarding their rights was maintained although it is presumed that inventions patented throughout the year following the expiration of the work contract had been performed during its term. On the other hand, the draft bills established some differences with regard to regulations until then, excluding those inventions made by university professors during their teaching activity, establishing the obligation to communicate the invention to the employer and their intention to patent the worker or, on the contrary, the worker was free to exercise his/her rights as the inventor, and attributed the knowledge of the disputes to ordinary civil jurisdiction prior to arbitration.

These drafts did not get to be approved, with two new draft bills regarding patent law being written up in 1981 and 1982. As a new feature, the 1981 draft proposed the regulation of workforce discoveries and innovations along with inventions; the possibility for the employer to reserve the non-exclusive right of exploitation over the object of the patent instead of taking ownership of service inventions; Contrarily, it was also foreseen that the worker could patent the invention in those countries where the employer did not intend to patent it; it also established a specific regime for inventions made by university professors as a consequence of their teaching and research activity; and removed the attribution of the competency of the civil courts.   The 1982 draft was intended to eliminate some points of the 1981 draft, specifically all which related to workforce discoveries and innovations; the provision that the worker-inventor could request the patent in those countries where the employer did not do so; as well as the special regime for those inventions made by university professors.

These draft bills on patents did not get beyond being mere proposals, as per its 1985 predecessor, although coinciding nearly word for word with the Patent Act approved thereafter and currently valid, with regard to inventions made in the context of an employment or service relationship.

This topic has currently been regulated via a patent law, specifically, the Patent Act 11/1986, under Title IV, under the heading “Employee Inventions”, complemented by Articles 140 to 142 of “Chapter IV Conciliation in the field of Employee Inventions” which should be seen in conjunction with those articles regarding the right to the patent and the inventor’s rights.

As mentioned above, the disadvantage of regulating this subject by means of a patent law is that the only inventions that are regulated are those susceptible to being patentable. Also included however are those inventions that can be protected by a utility model, as well as under provisions of law, by Plant Variety Protection Titles and Protection of Topographies of Semiconductor Products. Therefore, there is currently a legal gap for those inventions obtained within the framework of a contractual relationship that do not fulfil the requirements established by law for their protection by means of exclusive temporary titles.

Consequently, we can define the area of employee’s inventions regulated by the Law of 1986 by saying that they refer to inventions performed by both private sector workers as well as public sector workers, employees and civil servants, that meet the requirements established by law for their protection with exclusive temporary titles, throughout the duration of their contract or employment/service relationship. Hence, the common requirements are: 1) the need to be inventions exclusively in a legal sense or comparable creations susceptible to being protected by exclusive protection titles; 2) the need for inventions to be performed by private sector workers or public sector workers, employees or civil servants; the need for inventions to be obtained throughout the duration of the contract or employment/ service relationship.

The law differentiates between three types of work inventions, but theory rates them differently. We have preferred to group them by the individual to whom their ownership belongs.

Inventions that belong to the employer (Art. 15), an invention arising from the object of a contract, even though it is not necessary for this to be the specific and exclusive object of the contract but rather that the invention arises from the contractual activity and is inapplicable within the business. The employer has the patrimonial rights over the invention and is able to apply, or not, for the corresponding patent or exclusive title. On the other hand, the worker has the right to be recognised as the inventor and, eventually, may be entitled to supplementary remuneration provided that two accumulative requirements are met, 1) his/her personal contribution to the invention exceeds the object of the contract; 2) if the importance of the invention to the company exceeds the object of the contract, understood as meaning the objective value of the invention.   How to calculate or determine this supplementary remuneration remains unsolved, as the Law does not regulate this.

Inventions taken as own by employers (Art. 17), those inventions performed throughout the duration of a contract where the professional activity does not consist of carrying out investigations that expect to lead to inventions, but is connected to the mentioned activity and where the knowledge acquired within the business regarding the use of methods provided by this have predominantly influenced development. The main ownership corresponds to the worker, but this ownership is lost if the employer fulfils his/her right to claim ownership of the invention but not, however, if he/she only reserves the right to its use. Under these circumstances, the worker shall have the right to equitable financial remuneration fixed in relation to the invention’s industrial and commercial importance and taking into account the value of the means or knowledge provided by the company and the contribution made by the worker himself.

Free inventions or those that belong to the worker (Art. 16), are inventions made during the contract period, and not as a result of a contracted investigation activity, not linked with the work relationship or, even if it is linked to this, the knowledge or means provided by the company have not predominantly influenced this. As might be expected, the worker is the owner of the invention, with the employer having no ownership over it and, consequently, the worker is free to do with it as he/she sees fit, unless the invention is so closely related with the company activity that the exploitation by the worker could be estimated to be a violation of duty if this does not concur with the company activity.

The worker has a clear obligation to communicate those inventions that are ownership or could be ownership of the employer, within a period of three months. On the contrary, the worker would lose all economic rights to the invention, but never the moral right as the inventor. The mentioned obligation to communicate this to the employer must be made in writing, indicating the necessary data and reports so that the employer can exercise his/her corresponding rights. Here, the Law does not state the period of time whereby the employer must communicate to the worker whether or not it takes ownership of the invention or reserves any right to it. In order to fill this gap, the doctrine in virtue of the duty of collaboration understands that this should be within a three month period as from the worker communicating the invention. This duty of collaboration is understood from two aspects, on one side the duty to communicate and, on the other, the duty to secrecy. Although, once again, there is no penalty established by law with regard to the failure to comply with this, the doctrine is understood as being able to resort to contractual good faith of the Civil Code regarding dismissal under the Labour Statute for infringement of contractual good faith.

Finally, we need to go further into the possibility of the employer claiming inventions once the working relationship has concluded, as the Law stipulates that “Inventions for which a patent application or other title of exclusive protection has been filed within one year following expiry of the work or service relationship may be claimed by the employer”. This point has raised numerous interpretations of legal doctrine regarding whetherthere is a rebuttable presumption of good faith or not. In the first case, the worker could prove that the invention is a result of his/her activity after the expiry of work relations with the employer. In the second instance, the employer could claim the invention despite any proof put forward by the worker regarding the invention having nothing to do with the company activity. The question has been resolved by new Law 24/2015 of 24 July, which has introduced the expression “unless otherwise proven” and “it is presumed that this was performed during the validity of same” in the regulation of inventions carried out in the year following the expiry of a contract. With this new wording, it is clear there is a rebuttable presumption and, consequently, the employee may prove that the invention was not performed during the contract term.

Although the new Law 24/205 of 24 July, has filled some of the existing gaps in the still valid 11/1986 Law, it has not resolved all the pending questions. Thus, it still maintains all matters relating to types of inventions, ownership in each case, rights and duties of the parties…; the period for communication of the invention by the worker to the employer has been modified from three months to one month; other points have been regulated, such as the period of time the employer has to assume ownership of the invention, which is three months, establishing as a result the failure to comply with this limit as the expiration of such right, and the same approach regarding the deadline for submitting the application for this; the worker’s right to request reasonable compensation with regards to non-patentable technical improvements obtained through the development of his/her activity is also regulated.

Lastly, and with regard to those inventions made by civil servant staff, expressions have been modified to include all investigating staff, irrespective of the link to the Administration, in this way the word “professor” is no longer used and the word “investigating staff” is included, for which definition one must go to Article 13 of Law 13/2011. In this field, advances have been numerous, as the 1985 law did not anticipate any aspect of the communication and collaboration period. However, the new 2015 law partly anticipates this process. In this way a period of three months is established in order to communicate the invention, with non-fulfilment resulting in the loss of any recognised rights, that is, the participation in profits, the manner and amount of which is to be determined by the Governing Council of the University or by the Government, based on the characteristics of each public investigation entity. Once the invention is known by the corresponding public entity, a period of three months is available in order to communicate to the author its will to maintain its rights to the invention or to consider it as an industrial secret, reserving its rights to exclusive use. Once this three month period has concluded without the entity having communicated anything to the author, he/she may then submit the relevant application. Furthermore, these entities may also transfer ownership to the author, reserving their non-exclusive, non-transferable and free license, or a participation in the profits obtained from the exploitation to be determined by the same governing bodies as per the investigator’s participation.

In conclusion, although the new 2015 Patent Act implies a better regularisation of deadlines, processes and non-fulfilment of these, there are still some major gaps that can only be filled via the interpretation of the Courts.