Turkey: Regulating the calculation of compensation for employee inventions

December 08 2017

The decree law pertaining to the protection of patent rights was in force between 1995 and 2017. As per to decree law the rules on how to determine the amount of compensation to be paid to an employee in case of full or partial claim on invention was to be regulated by a regulation. However this regulation was never prepared or enacted.

The Industrial Property Law numbered 6769 dated January 10 2017 rules employee invention and compensation matters in detail and finally provides a Regulation on Employee Inventions, Inventions Realized within Higher Education Institutions and Inventions Arisen From Projects Supported by Public Authorities. It regulates the method to determine the amount of compensation of an employee, and was entered into force on September 29 2017.

As per the Regulation, in the case the employer demands a full or partial right on the invention of an employee, a reasonable compensation and an award should be paid to the employee. The regulation provides rules about the methods to calculate the reasonable employee award. The amount of the award that will be paid in addition to the compensation should not be less than net minimum wage.

In principle the amount of compensation shall be determined by the parties via an agreement to be signed between parties, following a full or partial claim. In case of a dispute, especially if the revenue of the invention cannot be determined, compensation can be determined by comparison or as per a determinable profit of enterprise from invention or as per the reasonable amount that employer would pay, if he/she wanted to purchase the invention. In addition, the revenue of the invention can be considered equal to revenue earned from granting a licence or to revenue received from the sale of the invention or to the amount of profit received from the set off of the invention.

An important point is that the IP Law rules that after claiming a right on the work-related invention, the employer cannot refuse paying the inventor's compensation with the argument that the invention is not worth protecting. However in case an invalidation action filed against the patent is accepted by the competent Court, the employee cannot demand for compensation over his invention. The lack of clarity in the second sentence of this provision led some employers to have third parties file invalidation actions against the patent in order to get rid of the employee compensation. However the relevant rule of the Regulation clarified the issue by stating that the period until the finalisation of the invalidation action will be taken into consideration for the calculation of the employee compensation and award. Before the Regulation was enacted, some tactical invalidation actions were filed by some well known pharmaceutical companies in Turkey. All of these actions have become useless thanks to clarifying provisions of the Regulation.