Suvi Julin August 29 2022 Employee inventions in Finland – inventors' rights and obligations Berggren Oy | Intellectual Property - Finland Suvi Julin Intellectual Property IntroductionRights to inventionsObligations of employee inventorRights of employee inventorCommentIntroductionEmployee inventions are subject to the Act on the Right in Employee Inventions(1) in Finland. The Act is partly compulsory and governs:rights to an invention;invention remunerations;employee inventors' rights and obligations;employers' rights and obligations; andclaims and disputes relating to employee inventions.This article, the second in a series on employee invention issues,(2) focuses on employee inventors' rights and obligations in Finland.Rights to inventionsAccording to article 4 of the Act, the rights to an invention belong to an inventor even when an invention arises during the inventor's employment relationship. However, the employer is entitled to acquire the rights to the invention in whole or in part if the invention results from an employee's activity in the performance of their duties or is essentially a result of an employee's experience in the enterprise or institution of their employer or in an enterprise or an institution belonging to the same consolidated corporation. This also applies when the invention is a result of a task assigned to the inventor employee more specifically (for further details, see "Employee inventions in Finland: ensuring proper transfer and assignment of IP rights to employers").Obligations of employee inventorThe Act sets certain obligations on an employee who has made an invention that falls under the scope of the Act. Namely, the inventor must:notify their employer of the invention in writing without delay (promptly after the invention has arisen);provide a sufficient level of detail of the invention and all such information that enables its use and exploitation so that the employer can evaluate the invention and decide whether they wish to acquire the rights to the invention;provide the employer with information regarding the circumstances under which the invention was made (if the employer requests this information); andkeep the invention confidential for the employer's consideration during a four-month period, which starts from the date of notification.The Act is compulsory in terms of keeping the invention confidential during the employer's four-month consideration period. However, although not compulsory, other obligations of the employee inventor are well-established practice in Finland. Missing written notifications on inventions are a typical source of confusion as it may be unclear when the employer's four-month consideration period has begun and when the employer should have either given a decision to acquire the rights or to seek extension of the consideration period if needed.Also, it is generally understood that the employer's consideration period shall not start running until the inventor has provided sufficient details of the invention so that the employer can properly evaluate it and decide whether they wish to acquire the rights to it. If a well-managed process is not in place, tracking this becomes quite difficult for both the employer and the inventor employee.Rights of employee inventorMany of the compulsory parts of the Act are directed to the rights of the employee inventor. Quite surprisingly, there is a compulsory rule in the Act according to which the employee inventor is entitled to file a patent application for the invention if the inventor notifies the employer one month prior to the filing date that they intend to do so and ensures that confidentiality obligations are maintained. Although this right is not often exercised, it is something that should be carefully managed in the invention processes.The employee inventor's right to remuneration for the inventions to which their employers have acquired the rights also falls under important compulsory sections of the Act. The inventor is entitled to receive a reasonable remuneration and any prior agreement through which the inventor's rights to the remuneration are waived is null and void by the law.The inventor is also entitled to raise a court action in a remuneration matter up to 10 years from the date on which the employer notified the inventor that they will acquire the rights to the invention. In addition, if a patent application was filed in connection with the invention, the court action may be raised within one year from the grant date, meaning that such a court action could be raised later than the standard 10-year period.The employee inventor may also be entitled to a higher remuneration than they had originally received if the circumstances have significantly changed and the invention turns out to be more valuable than expected.Finally, the inventor is also protected in situations where the inventor transfers to a new employer. Any agreement made between the inventor and the previous employer regarding an invention is automatically null and void if the agreement is executed more than a year after the employment relationship was terminated.CommentThe Act secures inventors' rights under an employment relationship and can be viewed as being quite pro-inventor. To ensure clarity, especially in terms of crucial time limits and to ensure that rights are being properly transferred and assigned to the employer, proper invention management processes should be set up. Written processes are always recommended.For further information on this topic please contact Suvi Julin at Berggren Oy by telephone (+358 10 227 2000) or email ([email protected]). The Berggren Oy website can be accessed at www.berggren.eu/en.Endnotes(1) 656/1967.(2) For the first article in the series, see "Employee inventions in Finland: ensuring proper transfer and assignment of IP rights to employers".