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The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Patents - Law on Employees' Inventions - Spain

The Spanish legal regime on employees' inventions is governed by Articles 15-20 of the Spanish Patents Act (Law 11/1986, of 20 March, on Patents –"SPA") which establish the basic principles in this matter and include rules on ownership, remuneration as well as the obligations and rights of employees and employers. The rights granted to employees are of an imperative character and therefore any waiver of those rights is null. Any dispute involving employees' inventions must first be filed with the PTO. The matter will be heard by a commission of three members headed by an expert appointed by the Spanish PTO, one appointed by the employee and one appointed by the employer. If the parties do not agree with the proposal of settlement they are free to take the matter to court. 

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-When does the regime on employees' inventions apply?

It applies to inventions created by an employee during the term of their employment or service relationship with the company and those which are subject to a patent application within the year following the termination of the employment relationship. 

The regime provided by the SPA applies to government or public administration's employees. The SPA also establishes the rules regarding ownership over inventions created at a university. 

-Ownership regime, employers' options and employees' remuneration

The SPA distinguishes between three types of inventions (so-called "service", "mixed" and "free" inventions by the Spanish courts and legal doctrine) created by employees with different regimes on ownership and remuneration for employees:  

Service inventions are those made by an employee during the term of their employment or service contract and which are the result of research that is explicitly or implicitly the subject-matter of the contract.  

These inventions belong to the employer and the employee is not entitled to an additional remuneration for their achievement, unless their personal contribution to the invention and the importance of the invention to the company obviously exceed the explicit or implicit terms of their contract or employment relationship.  

Mixed inventions are the inventions made by the employee related to their professional activity and where the knowledge gained within the company has had a decisive influence or the employee has used the means provided by the company. Employees' inventions for which a patent has been applied for within one year from the end of the employment relationship are also included in this category.  

In this case, the employer can choose between:

(i) Claiming the ownership of the invention; or 

(ii)  Reserving itself an exclusive or non-exclusive use right over the invention. 

The employee is entitled to a fair economic compensation which will primarily depend on whether the employer claimed the ownership of the invention or reserved itself a use right –and, in this case, whether or not said use is exclusive. In addition, the following criteria shall be taken into account in order to calculate the remuneration: (i) the invention's industrial and commercial importance; (ii) the value of the means or knowledge provided by the company; and (iii) the contribution made by the employee himself. 

Free inventions are all other inventions which belong to the employee who invented them. 

-Employees' duties: notification of the invention and cooperation

The employee must report the existence of service and mixed inventions to the employer or otherwise they will lose all their rights under the SPA. The report must be submitted in writing and it must contain all the data and information that would enable the employer to claim their rights within three months after receipt of the notification.

The law does not establish any time frame in which the employee has obligation to report. In the absence of any case law interpreting this provision, legal commentators state that said report is to be submitted without undue delay once the invention is made.

Moreover, the employee shall cooperate with the employer as needed for the effectiveness of the rights granted to both of them by the SPA in the frame of employees' inventions. In particular, they shall abstain from carrying out any act which may imply a limitation of said rights (for instance, obligation of secrecy and obligation to refrain from disclosing the subject-matter of the invention). 

-Employers' duties: remuneration and cooperation

The employer shall provide the employee with a compensation for their invention in accordance with the terms established in the law. They shall also cooperate for the effectiveness of the rights granted by the SPA, including –as in the case of the employee- not conducting any act which may limit those rights. 

-Are contractual agreements possible?

Whilst contractual agreements regarding employees' inventions are possible, the rules on employees' inventions are of a mandatory nature. This means, in particular, that any contract clause that implies an advance waiver of the employee's rights relating to employees' inventions is null and void.

-Procedural issues: specific settlement procedure

The SPA establishes a compulsory settlement procedure in the matter of employees' inventions before the case can be litigated in court. The procedure will be handled by the Industrial Property Registry at the PTO.

The case will be heard by a commission of three members (an expert from the Registry, an expert appointed by the employee and an expert appointed by the employer). The commission will issue a proposal of settlement within a maximum of two months from the date the procedure was launched. The parties must provide their answer to the proposal within fifteen days. If they do not agree, they would be free to initiate judicial proceedings. 

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