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Johan Aerts

Did you know that the right to a patent needs to be assigned from the inventor to the applicant?

As a response to the global Covid-19 pandemic, the European Patent Office has introduced the possibility of holding oral proceedings by videoconference. This applies not only to first instance proceedings (examination and opposition), but also to oral proceedings before the Boards of Appeal.
Assignment of the right to a patent

According to Belgian patent law, the right to a patent for an invention belongs to the inventor or to its successor in title. Therefore, the right to a patent always originates from the inventor, i.e. a natural person. However, this right can be assigned to another entity, such as a company, by means of an agreement. The assignment is important because, in its absence, the inventor can request the Court to transfer the patent to itself or to be registered as co-owner of the patent if the inventor only partially contributed to the invention. Alternatively, the inventor can also request the Court to nullify the patent in its entirety, or partially, when the inventor only contributed to part of the invention.

Between an employer and an employee, it is best to arrange the assignment by means of a clause in the employment contract or with a separate agreement because, in Belgium, there is no general legal provision that arranges the automatic assignment of the right to a patent between an employee and an employer. In the absence of such an agreement between employer and employee, established case law does show that in case of a dispute, the Court will make a distinction between the following types of inventions according to the degree of involvement of the employer.

·       Service inventions that are the result of the employee’s normal tasks for the employer. These will normally be fully assigned to the employer.

·       Dependent inventions which the employee makes, not on the direct instruction of the employer, but using the resources or knowledge of the employer. In this case, it is less clear to whom the right to the patent will be assigned, and it can also be that the patent is assigned to both parties as co-owners.

·       Free inventions that the employee makes without any involvement of the employer. These will normally be fully assigned to the employee.

However, a company cannot fall back on this distinction when collaborating with third parties who are not employees, such as freelancers or consultants. In this case and in the event of a dispute, it is likely that the right to the patent will be assigned in whole, or in part, depending on the contribution of the third party, to the inventor and not the company. In these cases, it is thus indispensable to include the transfer of intellectual property rights, such as patents, in an agreement with these parties.

In summary, a company is not simply the owner of inventions that were made on its behalf, without clear agreements about this. It is advisable for a company to carefully check which agreements exist with its developers and to update or provide them agreements where necessary.

If you have questions on patent assignments, GEVERS is happy to assist.

Do not hesitate to contact us!

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