Title V of Industrial Property Law 19,039 concerns inventions in service, more widely known as employee inventions.

Although the law does not directly define these terms, it establishes that:

"the right to apply for registration as well as the eventual industrial property rights in labor and service contracts, for the accomplishment of an inventive or creative activity, will belong exclusively to the employer or the person who ordered the service, except when expressly stated otherwise."

The legal treatment of employee inventions is different when the employee is not deemed to perform an inventive or creative task under his or her employment contract. In this case, the employee can apply to register the invention and any eventual IP rights arising from the invention will belong exclusively to the employee.

However, if the employee evidently benefited from knowledge acquired through and means provided by the company in the creation of an invention, the IP rights will belong to the employer. In this case, the employer must grant recompense to the employee, which must be agreed by the parties.

The same rules apply to an employee who creates an employee invention by exceeding the task required of her or him.

University academics receive special treatment under the law. Article 70 establishes that:

"the right to apply for the registration as well as the eventual industrial property rights derived from the inventive and creative activities of persons employed dependently or independently by universities or research institutions included in Decree Law No. 1,263 of 1975, will belong to the latter or to whomever they desire, notwithstanding the by-laws of said institutions that regulate the rights and benefits enjoyed by inventors or creators of that institution."

According to the law, employee rights cannot be waived before the granting of a corresponding:

  • patent;
  • utility model; or
  • layout design or topography of an integrated circuit.

Any statement or clause to the contrary will not be considered.

Finally, even when the law determines that all disputes relating to the enforcement of inventions in service should be heard by the Industrial Property Court, the Supreme Court's interpretation is that a dispute must be heard in the first instance before the Patent Office.

For further information on this topic please contact Juan Pablo Zamora Iturra? at Montt y Cia SA by telephone (+56 22 233 8266) or email (juan.zamora@monttgroup.com). The Montt y Cia SA website can be accessed at www.monttcia.cl.

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