On February 22, 2024, the third session of the Intellectual Property Consultation Point for Exporters takes place
The author of the utility model "Furniture Mounting Corner" inquired about the possibility of receiving lawful remuneration from the copyright holder. The author stated that the technical solution was created as part of a duty assignment.
The response was based on the provisions of the "Regulations on Payment of Remuneration and Compensation for Industrial Property Rights Objects" (hereinafter referred to as the Regulations), approved by the Resolution of the Council of Ministers of the Republic of Belarus dated March 6, 1998, No. 368, as amended by the Resolution of the Council of Ministers of the Republic of Belarus dated November 9, 2023, No. 769.
In accordance with the Regulations, which regulate the conditions and procedure for payments, as well as the minimum amounts of remuneration for the creation and use of service objects of industrial property rights, such as service inventions, utility models, industrial designs, topographies of integrated circuits, plant varieties, the author seeking clarification is indeed entitled to remuneration for both the creation and use of the utility model under the patent.
However, to receive such remuneration, both the employer and the author must meet several conditions.
First. Remuneration for creating a service object is paid if the employer obtains a patent. According to the Regulations, a patent issued by the patent office of the Republic of Belarus is the document confirming the creation of a service object. It was revealed during consultation that the patent registration fee, issuance, and maintenance fees have already been paid. A search in the open database of registered patents in Belarus showed that the patent has not been published yet and therefore not issued.
Second. Remuneration for creating a service object is paid to the author (co-authors) based on a contract concluded between the employer and the author (co-authors) of the service object. The author was advised to enter into such a contract with the employer.
Third. Remuneration for creating a service object is paid to the author within three months after publication by the patent authority of the Republic of Belarus. The minimum remuneration for creating a service object in the form of a utility model is 10 basic units. The author was advised to remind the employer of this provision.
Fourth. Remuneration for using a service object is paid in cases such as:
- Sale by the employer of a product in which the service object is applied (contained, included), or a product manufactured using the service object;
- Introduction by the employer into operation within the in-house production process of a product in which the service object is applied (contained, included), or a product manufactured using the service object;
- Conclusion of a licensing agreement providing for the granting of the right to use the service object;
- Conclusion of an assignment agreement.
The minimum remuneration for using a service object for the author (co-authors) is 10% of the profit attributable to the service object remaining with the employer after taxes or 30 basic units for a full year of use. If the service object was used for less than a year, the remuneration in basic units may be calculated proportionally to its usage time.
It should be noted that profit attributed to the service object refers to a portion of profit received by a legal entity from selling a product containing or manufactured with the service object, as calculated by the employer. The procedure for calculating the specified share of profit is determined in the local legal act of the legal entity.
Fifth. The documents confirming the use of the service object are:
- an act of using the service object drawn up by the employer, based on the invoice, an act of commissioning, an acceptance certificate with a comparative analysis of the service object and the product in which the service object is applied (contained, included), or a comparative analysis of the service object and the product manufactured using the service object;
- a license agreement;
- an assignment agreement.
Sixth. The payment of remuneration for the creation of a service object and remuneration for the use of a service object may be made from the own funds of the legal entity (profit) remaining at the disposal of the legal entity after the payment of taxes, fees (duties), and other mandatory payments to the republican and local budgets, including to the budgets of state target budgetary funds, budgets of state extrabudgetary funds. Thus, the employer (patent holder) should act in accordance with the norms stated in the above Regulation, and the author may address questions to the employer regarding remuneration for the creation and use of the service utility model under the patent immediately after the issuance of the patent of the Republic of Belarus for the utility model. The fact of the issuance of a patent for a utility model can be established by tracking the database of industrial property objects of the National Intellectual Property Center.
