Unlike trademark applications, in patent-utility model and design applications, the names of the creators of inventions and designs can be given place in addition to the applicant. These persons are called “inventors” in patent and utility model applications and “designer” in design applications, and the names of these persons must be included in the application by law. In some cases, the inventors or designers may request their names to be kept confidential. This situation is stated in the Industrial Property Law No. 6769 as “The designer has the right to request to be specified as a designer if his name is not specified in the application. However, the designer may also request that his name be kept confidential.” . In other words, the names of the inventors and designers must be indicated in the application, but it is possible to keep the names of these people confidential at their own request.
Identification of the applicant
The right ownership in design and patent/utility model applications does not belong to the one/ones who the invention and design in all cases. In other words, inventors and designers cannot directly own the industrial property rights of the application that will be made because they bring about the inventions and designs that they create. The basic condition for becoming an applicant is that they do not work in a service association at a workplace in the field of activity of the design and invention they make. In other words, people who make inventions or designs related to the field of activity of the company they work for do not have the right to apply for the designs and inventions they make without informing the company they work for.
What is a service invention?
According to Article 113 of the Property Law, “An invention that an employee performs in accordance with the activity that he/she is obliged to perform in an enterprise or public administration, or that he/she makes during a business relationship, largely based on the experience and work of the enterprise or public administration, is a service invention.”
Obligation of notification about the service invention
The law has imposed some obligations for persons who make service inventions. For instance, the person who makes an invention has an obligation to inform their employer about the invention. This notification must be made in writing and without waiting as soon as the work related to the invention is completed. The employer may request the completion of the necessary deficiencies from the employee within two months and may make a claim for the invention within 4 months after the deficiencies are completed.
Types of Rights of Ownership
There are two types of right ownership in the law, which are full right ownership or partial right ownership. For the periods specified in the law, the employer may request either full or partial ownership of the invention. If full ownership of right is requested, the application must be made on behalf of the employer, if partial ownership of rights is requested, the application can be made on behalf of the employee and the employer can request to use the invention. If no claim of ownership is made, the invention is considered a “free invention”.
What is a free invention?
A free invention is when the employer releases the invention in the case that the inventor does not want to take ownership of the rights to his invention, and the inventor can apply for a patent or utility model by covering their expenses on their behalf if they wishes in this case.
In case of a partial claim, the invention is also considered as a free invention.
Interpretation of concepts
While I want to convey the process, I do not want to overwhelm the reader with the articles in the law; if requested, the Laws and regulations on this issue can be accessed from the website of the Turkish Patent and Trademark Authority. However, the conclusion that should be drawn from the information is that a design or invention made while working in a workplace should not fall into a misconception that its designer and inventor have direct ownership rights. If the invention or design is made even at home, it must be notified to the employer without delay if it falls within the field of activity of the workplace by law. Otherwise, even if you make an application by covering the costs without making this notification, the employer may file an action of replevin against you with the claim of right ownership because the invention was not notified to the employer in accordance with the law.
What is replevin?
If the design or patent/utility model application was made by a person who is not the real right owner or was registered on behalf of this person, the person claiming to be the real right owner may request from the court that the applicant’s ownership be transferred to them or to be recognized as the applicant. Yes, I know that this situation seems interesting to you. You may think “I made the design, I came up with the invention”, but in accordance with the law, the employer is primarily entitled to the invention made by the employees. Inventors, of course, have some rights, and these rights should be determined by the contract made between them and their employer, and the inventor should also receive a share of the income of the invention they made. However, the right to be an applicant in the service inventions made by the employee is not primarily given to the inventor and is left dependent on the employer’s request.
