Egypt Egypte Ägypten. Report Q183. in the name of the Egyptian Group by Ahmed Abu ALI, Samir HAMZA, Hossam LOTFI

Transcription

1 Egypt Egypte Ägypten Report Q183 in the name of the Egyptian Group by Ahmed Abu ALI, Samir HAMZA, Hossam LOTFI Employers rights to intellectual property Questions 1. The State of positive Law 1.1 The Groups are invited to present the legal framework governing relations between employers and employees in the field of intellectual property rights. In particular, the Groups are invited to state whether these rules arise from provisions concerning labour law or whether these rules arise from provisions concerning intellectual property rights. In addition, the Groups are invited to state whether these rules may be considered as being public policy rules (i.e. mandatory rules) or whether, on the contrary, they may be modified by contractual relations between employees and employers. The legal relationship between employers and employees in the field of intellectual property rights is governed by the Egyptian Civil Law and the Intellectual Property Law. The relevant provisions of these two Laws are as follows: a) Article 688 of the Civil Law reads as follows: When the worker discovers a new invention while in the service of his employer, the employer will have no rights in respect of the invention, even if the worker has discovered the invention by reason of the work performed in the service of the employer. An invention discovered by a worker in the course of his work, belongs however to the employer, if the nature of the work that the worker has undertaken to carry out requires him to give his time to invention or if the employer has expressly stipulated in the contract that he will have the right to inventions discovered by the worker. If the invention is of serious economic importance, the worker may, in cases falling within the preceding paragraph, demand a special remuneration to be fixed in accordance with the principles of equity, taking into account in the assessment of such remuneration the extent of help supplied by the employer and the use the worker has made of the employer s installations for the purpose of the invention. b) The Intellectual property Law provides in Articles 6, 7 and 8, for the following: Article 6: The right to the patent shall be established for the inventor or the one to whom his rights have devolved. 1

2 If the invention is the result of joint work between several persons, their rights to the patent shall be established equally between them, unless otherwise agreed by them. However, if more than one person has reached that same invention independently from each other, the right to the patent shall be established for the one who precedes the others in submitting the request for the patent. Article 7: If a person charges another to disclose a specific invention, all rights ensuing from that invention shall be established for the former person. Also, the employer shall have all rights ensuing from the inventions designed and originated by the worker or employee during the existence of the work or employment bond, as long as the invention is reached within the context of the contract or the work or employment bond. The inventor s name shall be mentioned in the patent and he shall be entitled to his wage for his invention in all cases. If such wage is not agreed upon, he shall have the right to a fair compensation by the one who charges him to disclose the invention, or by the business owner. In other than the foregoing cases, where the invention lies within the activity of the public or private establishment by which the inventor is employed, the business owner shall have the choice between exploiting the invention, or buying the patent in return for a fair compensation he pays to the inventor, providing his option shall be made within three months from the date of sending the notification about granting the patent. In all cases, the invention shall be attributed to the inventor. Article 8: The request for a letters patent as submitted by the inventor within a year from the date he quits the private or public establishment shall be considered as having been submitted during his execution of the contract or the existence of the work or employment bond. Each of the inventor and the business owner shall have the rights prescribed in the previous article, according to each case. The period shall be increased to three years if the worker establishes or joins a rival establishment and the invention is a direct result of his previous activity and experience at the establishment he used to work for. The provisions of both the above two Laws only apply to patents and are not mandatory, i.e. the parties can freely contract out of them, unlike the Labor Law provisions (that apply to the employment contract). Same is a public order law and applies to an employment contract that is performed in Egypt. 1.2 The Groups are invited to specify, for each of the intellectual property rights (patents, plant variety rights, copyright or authors rights, patterns and models, and software rights, it being recalled that trademarks and brand rights are expressly excluded from the scope of the study in question) what are the legal solutions concerning ownership of rights over intellectual creations: Do these rights originally belong to the employer or the employee? If these rights belong to the employer from the outset, what are the conditions for this attribution? 2

3 And if these rights originally belong to the employee, does the employer have the right to have them transferred to it and under what conditions? And the Groups are also invited to specify, as far as it concerns patents, if it is the employer who is the owner, from the outset, of the intellectual property rights over inventions made by employees in the context of their employment contract and in the performance of their tasks. The Groups are invited to give replies both with respect to moral rights and economic rights for each type of intellectual property rights. As indicated above, the two Laws address only patents, however, the copyright section under the Intellectual Property Law, covers collective works and joint works (in software and artistic works). The relevant provisions are as follows: Article 138: In applying the provisions of the present law, the following terms shall have the meaning mentioned next to each of them: 4) Collective Work: It is a work set by more than one author by direction from a natural or juridical person who undertakes to publish it in his name and under his management. The work of authors in it is merged in the general aim targeted by that person, such that it becomes impossible to detach the work of each author and distinguish it separately. 5) Joint Work: It is a work that doe not fall within the collective compilations and it is set by more than one person, whether the share of each of them could or could not be separated. Further, Article 174 and 175 of the Law reads as follows: Article 174: If more than one person join in writing a compilation, so that the share of each one of them cannot be separated in the joint work, all the partners shall then be considered equal authors of the compilation, unless otherwise agreed in writing. In this case none of them shall unilaterally exercise the author s rights, except by written agreement amongst themselves. If the participation of all authors is listed under a different kind of art, each of them shall have the right to exploit the portion he has contributed separately, providing this shall not prejudice the exploitation of the joint compilation unless otherwise agreed in writing. Each of them shall have the right of filing court actions in case an encroachment takes place on any of the author s rights. If one of the joint authors dies without having a public or private successor, his share shall devolve to the rest of the partners or to their successors, unless otherwise agreed in writing. Article 175: A natural or juridical person who directs to the creation of the collective compilation, shall exclusively enjoy the right of exercising the author s rights on that compilation. 3

4 Under the Civil Law we have to differentiate between whether the work of the employee requires research or not. If the employee s work is in the research field and the contract of employment specifies for the right of the employer in the invention, then the invention will be attributable to the employer if it will not be attributable to the employee. Under the Intellectual Property Law, the invention is attributable to the employer if the invention falls within the context of employee s contract and as a result of performance of their tasks. In both cases, the employer has the right - against the payment of compensation to the employee - to have the invention rights transferred to him. Under Egyptian Law, the owner of an intellectual property right has two distinct rights: a) moral rights; and b) economic or financial rights (the right of exploitation). Moral rights are not assignable or transferable, while economic rights are assignable and transferable. 1.3 The Groups are also invited to provide information on procedures concerning potential disputes concerning the ownership of intellectual property rights over employees creations. Are these disputes within the jurisdiction of labour courts or, on the contrary, are they within the jurisdiction of the courts which are usually competent for intellectual property disputes? Is there a prior conciliation stage and if so, does it take place before the same court as the one having jurisdiction over disputes concerning the ownership or conditions for use of intellectual property rights over creations made by employees? Does the termination of the employment contract have an influence on the action which an employer can bring to obtain the attribution of rights over an employee s creation? Is there a limitation or statute-barring of the exercise of an action concerning the attribution of ownership rights over an invention or creation made by an employee in the context of an employment contract? Can the employee require the filing of a patent application in order to protect his invention or his other creations (registering patterns and models, etc.)? Disputes concerning ownership of intellectual property between the employee and an employer fall within the jurisdiction of the courts that have jurisdiction over intellectual property disputes. If the employer is a government body, then the dispute has to be referred initially to special settlement of disputes committees. Non-referral to such special committees may result in the refusal of the court to hear the case, on the basis that the case has been initiated prematurely. Termination of the employment contract has no effect on the disputed right. The general rule under the Egyptian Labor Law is that the statute of limitation runs after one year from the termination of the employment relationship. Also, application filed for a patent that is submitted within one year from termination, shall be regarded as having been submitted while the employment relationship still exists. This period will be extended to three years if the employee has been employed in a competing company. 1.4 The Groups are also invited to state whether there is a difference in status between employees in the private sector and researchers in universities or research institutes which receive public funding from the point of view of the employers rights. 4

5 The decisive factor is whether the employment contract scope of work is research and the provisions of the contract provide for the employer s right to the invention. Therefore, there should be no difference in both cases, except in the dispute settlement provision referred to in 1.3 above. 1.5 An important question in practice is whether compensation is due to employees in return for the rights of employers over the creations made by employees. Moreover, it is in this field that the greatest disparities are currently observed in the world. The Groups are therefore invited to specify whether their domestic laws provide employees with a right to compensation (financial or in nature) in return for the transfer of rights over their creations to their employers. How is this compensation calculated? What is the time limit for prescription or statute-barring of a claim for payment of this compensation? Yes, in both the civil and intellectual property laws, the employee is entitled to fair compensation. Both laws do not provide on how the compensation is calculated. This is left for the courts to decide upon on a case-by-case basis. The general rule is that all rights will prescribe after 15 (fifteen) years. 1.6 Finally, the Groups are invited to state whether there is a significant level of dispute in their countries concerning the ownership and use of rights over intellectual creations made by employees, and to give a general opinion on the effectiveness and/or efficiency of the national system. Disputes over employees rights over intellectual creations made by employees are rare. 2. Suggestions with respect to International Harmonisation 2.1 Do the Groups think that such harmonisation is desirable on the international level for each of the types of intellectual property rights? Do the Groups wish such harmonisation to be undertaken through labour law rules or through rules of intellectual property law? Yes, harmonization should be made through intellectual property laws. 2.2 The Groups are requested to state whether as a general rule it is the employer who is to be the owner, from the outset, of the intellectual property rights over creations made by employees in the context of their employment contract and in the performance of their tasks, or whether, on the contrary, it is the employee who must conserve his rights, but with the possibility for the employer to have them attributed to it under certain conditions. This question is answered by Article 688 of the Civil Law and Articles 6 and 7 of the Intellectual Property Law. (See the text of these Articles above). 2.3 If the employer was to be considered as owner from the outset of the intellectual property rights over creations made by employees, do the Groups think that the employee should receive a particular reward, in addition to his salary, for these creations, or do they think that such a reward is not justified? If, on the contrary, the employer is not vested from the outset in the intellectual property rights over creations made by employees, what would be the conditions for the attribution of 5

6 these rights and, in particular, what could the remuneration be, corresponding with the possibility of having the intellectual property rights in question attributed to the employer? Do the Groups consider that the adoption in principle of a reward could have an influence over the general system of intellectual property rights and if so, what would that influence be? He should receive an award (compensation). This is legally justified. The principle of an award will certainly encourage creations. 2.4 The Groups are also invited to present their opinions on the organisation of disputes concerning the attribution of intellectual property rights over employees creations and concerning their use by employers. Are the Groups of the opinion that such disputes should be governed by the courts which have jurisdiction in labour law matters, or are they more of the opinion that these disputes should be subject to those courts which judge intellectual property disputes? It should be recalled that the disputes may concern various aspects of relations between employers and employees: attribution of ownership of such rights; decisions concerning the means of protection and, finally, any compensation as may be due. To the courts that have jurisdiction over intellectual property disputes (see 1.3 above). 2.5 The Groups are also invited to give their opinion on the existence of differences, if any, between the status of private sector employees and researchers in universities and in research institutes which are financed by public funds. Are there any grounds for providing for a difference in treatment in the hypothesis of international harmonisation or, on the contrary, should all employees and researchers be treated in the same way? There should be no difference. All employees and researchers should be treated equally in the same way. Summary The legal relationship between employers and employees in the field of intellectual property rights is governed by the Egyptian Civil Law and the Intellectual Property Law. Under both laws, the invention must always be attributed to the employee, although the employer shall have the right to use (exploit) the invention against a fair compensation. The amount of compensation is left for the courts to decide upon. The court shall take into account (in determining the compensation) whether the employee s position and job was in research and development (researcher). Disputes over employees rights to intellectual property are rare in Egypt. 6