Statutory secrecy obligations related to employee inventions in Austria and Romania

Austria
Under Austrian law, an employee can only assign rights to future inventions to his/her employer if the inventions are considered employee inventions within the scope of the Austrian Patent Act ("APA"). A written agreement, eg in the employment contract or in the form of a collective bargaining agreement, is necessary. If such an agreement exists, the employee has to report any invention made to the employer, unless it is evidently not covered by the agreement. The employer must declare within four months of the report (shortened to three months in many collective bargaining agreements) that it claims the invention, otherwise it belongs to the employee.

To safeguard the interests of both the employee and the employer, in particular within this period of uncertainty as regards who will own the invention, the APA provides specific secrecy obligations:

• as a general rule, employees and employers are obliged to keep the invention covered by the above-mentioned report and declaration;
• the employee's secrecy obligation under this provision ends:- if the employer does not claim the invention in time; or
  - if the employer claims the invention in time, but abandons secrecy (of course, the obligation also ends if the employer publishes a patent application, insofar as the invention is disclosed in the published patent application).

Any other secrecy obligations imposed on the employee (either contractually or by law) remain unaffected.

• The employer's secrecy obligation ends if it claims the invention in time and the employee does not object to this claim (the employee might object that the invention is not an employee invention within the scope of the APA and that the rights in the invention therefore belong to him).
• The secrecy obligations do not prevent the employer and the employee from taking the necessary steps to safeguard their rights in the invention, in particular to apply for a patent.
• Any breach of this secrecy obligation gives rise to claims for damages of the other party, which also covers lost profits.
• The rights and obligations conferred to the employee and the employer remain intact even after the employment relationship has ended.

Romania
Romanian Law 83/2014, on Employees' Inventions ("LEI") differentiates between inventions created by employees as part of an inventive mission expressly assigned by the employer (inventions with an inventive mission) and inventions created by employees in the absence of an inventive mission (inventions without an inventive mission).

• The right in employee inventions with an inventive mission belongs to the employer. If the employer is a legal person under public law in the field of research and development, contractual provisions may provide that the right belongs to the employee.
• The right in employee inventions without an inventive mission belongs to the employee if the employer does not claim the invention within four months after it has been communicated to the employer or a longer period is stipulated under the employer's internal regulation.

In addition, the LEI provides for the following secrecy obligations in regard to employee inventions, regardless of which of the above-mentioned categories they fall under:

• the LEI clarifies that employee inventions may be subject to trade secrets;
• the employee-inventor shall not disclose or publish the employee invention without the employer's written consent. The same applies to the employer and to any third parties that learned of the invention due to the nature of their work;
• failure to comply with this secrecy obligation- triggers liability under the employment contract, if it contains a non-disclosure clause; or
  - if no such non-disclosure clause is provided for, where damage results from the disclosure, may trigger the tort liability under the provisions set forth by the Romanian Civil Code.

These examples show different approaches to regulating secrecy obligations in relation to employee inventions. Beside these rules under employee inventions law, Austrian and Romanian law also provide specific rules on the use of trade secrets (employee inventions will often be considered trade secrets).

A certain harmonisation of these rules is to be expected due to the trade secrets directive

Further reading

A "private sphere" for entrepreneurs - are you ready for the new Trade Secrets Directive?
How to surprise the market: The secret trademark application

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