Advice and Tips
In most cases, the company you work for owns the results of your paid work. However, what happens if you create something that is tangential to or outside of what you are paid for? Or if the work you have done for your employer can also be utilized outside of the company's operations?
We will take a closer look at the so-called intellectual work results, also known as intellectual property rights. And who owns these: you, the company, or perhaps both?
The typical objects for such questions are:
...where these are the result of your creative efforts. We will focus on inventions and creative works, as these are the areas our members have the most questions about.
Common to them all is that they arise in individuals and that at conception they are owned by the one who created them. However, the law is such that the employer under certain conditions may be entitled to take over rights, in whole or in part. This applies even if the employment contract does not say anything about the topic.
Our experience is that the employment contract or additions to it often regulate such transfer in a way that is advantageous for the company, and at the expense of the employee’s legal position. The legal situation largely allows such agreements, but we ask our members to be critical of whether the company demands rights to more than it strictly needs (“must take over” or “nice to take over?”) and perhaps also for more than what corresponds to what the employee receives salary for.
A good starting point for the issue of ownership is the contractual principle of "consideration for consideration." You receive a salary, and the employer receives the results of your paid work as your consideration.
Questions typically arise when you have created something that is not actually covered by what you are paid to do. Or when the scope of application for what you have made goes beyond the company's area of operation.
The rules for transferring rights to the company and any right to additional compensation are regulated differently in the provisions we have on inventions and creative works.
The lawyers at Tekna have extensive experience in advising members on how different types of employee intellectual property rights can be managed, both when entering into an employment contract and in subsequent discussions about employee rights that concern such boundaries; typically whether the company has the right to take over and whether it must pay an additional salary for such a takeover.
A patent is an exclusive right to an invention under the rules of The Norwegian Patents Act (in Norwegian). Such an exclusive right is only granted to technical solutions that are new compared to what is already known and that differ significantly from this.
The employee has in principle the same right to his invention as other inventors have. This is specified in the Employee Invention Act (in Norwegian) § 3. However, § 2 of the Act also states that most of the provisions of the Act can be deviated from by agreement between the parties, which is often done in practice – and often without the parties being fully aware of the implications. Therefore, the employee can legally waive rights under the Act, except for the right to compensation under §§ 7, 9, and 10, as well as their moral rights (name attribution in the patent application under the Patent Act).
The text below describes the rules that follow from the Act. The Act expresses a reasonable balance between the interests and needs of the parties.
The employee's rights are limited by various provisions that give the employer rights at the expense of the inventor. Limitations follow from § 4 of the Act and often also from the employment contract or other specific regulations (separate agreement on intellectual property rights, etc.). For such a transfer of rights, the employee may have an inalienable right to compensation beyond their salary, see § 7. More about such pre-agreed waiver of rights and compensation issues below.
If you have invented something new at work, you must inform your employer about the invention
If you have invented something new at work, you must inform your employer about the invention.
After an invention is made, or if you believe you may have come up with something potentially new, the employee must, according to the Employee Inventions Act § 5 (in Norwegian), without undue delay, inform the employer in writing about the invention. The company should thus be given an opportunity to assess whether it will exercise its right to take over rights to the invention.
If the company wishes to acquire rights to the invention, it must, according to § 6, provide written feedback to the inventor within four months after receiving the notification of the invention. For notifications and feedback under §§ 5 and 6, email can be used.
It is important that the parties comply with these notification rules. Lack of clear notification and feedback from the company can lead to uncertainty and conflicts about who has the right to the invention and whether the uncertainty is something to blame on the parties. This is especially relevant for inventions because the possibility of patent protection disappears over time, and other applications for similar innovations may take precedence in the queue of what is new for the patent authorities.
Many employment contracts, or other supplementary agreements, state that the employer will obtain the right to take over the invention without special notification or feedback. Such agreements simplify the situation for the company and are legally valid, but they have the weakness that the company often loses momentum related to assessments of whether to pursue the invention commercially.
The purpose of the notification and feedback rules, in addition to clarifying who has rights, is to ensure that it does not take too long for a potential patent application from the company's side. If it takes too long, the chance for patenting may be lost if another similar technology is patented first, thereby hindering the possibility of exploiting the idea commercially as an exclusive right.
The legislator's intention is that four months should be sufficient for the company to assess whether it is interested in taking over the invention. The employer is given a first right by law to take over inventions made by employees. After that time, the employee is free to dispose of the invention, provided that the employment contract or other agreement does not give the company better rights.
The extent of the employer's right to the invention depends on how closely related the invention is to the employment relationship and whether the invention falls within the company's area of operation. The law operates with three degrees of connection.
The formal requirements for obtaining a patent are not affected by the fact that the employer is the applicant. The inventors must still, as mentioned above, be named as inventors in the patent application. It is common to use specific forms that document the transfer of rights to the invention between the parties in the employment relationship.
Copyright is an exclusive right to the "creative work" one has created. What constitutes copyright and what it entails is regulated by the Copyright Act (in Norwegian). Creative works typically include literary, artistic, or scientific creations that express a certain original and individual creative intellectual effort from the creator, meaning they have what is known as "work height."
Such works can, for example, be: (see Copyright Act § 1)
With the copyright comes the commercial rights
If you hold the copyright to a creative work, you have the exclusive right to reproduce it in any form and to make the work available to the public. This is often referred to as the "commercial rights" to the work. As the "creator," you can prevent others from publicly displaying or performing the work or from selling copies of the work without an agreement with you.
Copyright, like patent rights, also includes the right to be credited as the creator/inventor. Creators also have the right to ensure that the work is not exploited in a way that is offensive to them or the work itself (the right of respect). The right to be credited and the right of respect constitute the so-called "moral" rights. The moral rights cannot be transferred and will therefore always remain with you as the creator. You can read more about this in Intellectual property rights (IPR) - employees.
Rules regarding the transfer of rights in employment relationships are partly governed by the Copyright Act, but primarily by unwritten law; customary law (particularly case law) and, as we will see later, also to a significant extent by contractual agreements between the employer and the employee.
Copyright to works created in employment relationships transfers to the employer without further agreement to the extent that it is necessary for the employment relationship to achieve its purpose.
This provision follows established law, confirmed in case law, often referred to as "background law."
This assumes that the development of the work is within the employee's tasks in the employment relationship and that the transfer is not considered unreasonable based on the specific circumstances.
Consequently, the company does not obtain copyright to works created by the employee in their free time or outside of their duties as an employee. The principle of "necessity" further limits what the company acquires through the employment relationship: Any use of the work beyond what the company itself can do will remain with the creator. Therefore, the employer essentially only acquires a right of use within its own operations.
A special provision in the Copyright Act, Section 71, states that the rights to computer programs are transferred to the employer unless otherwise agreed. This is the opposite of the general rule that applies to other types of works.
The Act does not contain any other provisions regarding the transfer of copyright in employment relationships.
Computer programs may be considered sufficiently original to qualify as protected works under Section 2, second paragraph, letter l of the Copyright Act. However, even if a program does not meet the threshold for originality, it is still covered by the rule in Section 71. At the same time, such programs may also be eligible for patent protection. However, something that is “merely” a computer program is generally not considered an invention under Section 1, second paragraph of the Patents Act.
According to Section 71, and subject to the limitations otherwise set out in the law, the copyright to computer programs created by a researcher at a university while performing tasks that fall within the scope of their employment or under the employer’s instructions, is transferred to the employer unless otherwise agreed. The author does not retain any publication rights, even if the program qualifies for patent protection. However, publication rights may be secured through other regulations, typically through guidelines at universities and university colleges.
In copyright law, the principle of specificity applies when interpreting agreements on the transfer of rights, as stated in Section 67, second paragraph of the Copyright Act:
“When copyright is transferred, the author shall not be deemed to have transferred more extensive rights than what is clearly expressed in the agreement.”
In the context of employment, this means that rights to works related to the employer’s activities—but which fall outside the employee’s defined duties and expected contributions—do not automatically transfer to the employer. In cases of doubt about whether the employment relationship includes the type of contribution represented by the work, the matter shall be resolved in favour of the employee (the author).
In contrast, such protection does not apply to patentable inventions.
This difference is partly due to the assumption that copyrighted works reflect a stronger personal imprint and connection to the author, compared to the more technical nature of ideas typically covered by patents.
Inventions are treated differently from copyrighted works. When an employer takes over the rights to an invention, the employee is entitled to “reasonable compensation” under Section 7 of the Employee Invention Act. A condition for this entitlement is that the value of the rights transferred to the employer exceeds what could reasonably be expected from the employee based on their salary and employment terms.
The value must be assessed on a discretionary basis, taking into account the specific circumstances of the case.
There is no established overview of common practice for determining compensation, and case law in this area is limited. As a result, estimating a reasonable amount can be challenging.
One complicating factor is that it usually takes a long time from the initial idea to potential commercialisation. Throughout the patent’s lifetime, many additional uncertainties may arise, such as the availability of competing technologies. Furthermore, success typically requires substantial risk capital and market access through a knowledgeable actor.
Determining compensation at an early stage is highly uncertain
Determining compensation at an early stage is therefore highly uncertain.
Even though the technical idea may be the core of the initiative, the inventor’s contribution to the overall commercial potential may be relatively modest. For this reason, Section 10 of the Act ensures that the inventor has the right to revisit the question of compensation if key circumstances change significantly.
When determining compensation under Section 7, particular consideration must be given to:
If the parties cannot reach agreement on compensation or other aspects of the transfer of rights, either party may bring the case before the Mediation Board for Employee Inventions.
The board’s role is to help the parties arrive at a mutually acceptable solution, for example by proposing a balanced settlement. Tekna submits cases to the board free of charge for its members, as part of our legal assistance offering.
If the employee does not receive what is considered reasonable compensation through mediation, the case may be brought before the courts. Note that mediation through the board is not a prerequisite for legal proceedings, but a voluntary arrangement.
Norwegian law generally assumes that rights are transferred to the employer without a specific agreement, to the extent necessary for the employment relationship to fulfil its purpose. However, it is quite common to regulate this directly in the employment contract or in supplementary agreements. In such cases, the agreement simply reflects what already follows from the legal framework—known as background law—and serves to raise awareness among the parties.
The law gives the parties considerable freedom to deviate from the background law, even if this results in reduced rights for the employee. Neither the Copyright Act nor the laws governing inventions (the Patents Act and the Employee Invention Act) limit the employer’s ability to demand ownership of employee innovations, even if they are only loosely or not at all connected to the employee’s job. See Section 2 of the Employee Invention Act.
An exception to this is the moral rights (the right to be named and the right to integrity), which cannot be waived.
Tekna encourages you to critically assess agreements that state:
Section 7 of the Employee Invention Act states that any agreement where an employee waives the right to reasonable compensation before an invention is made is legally invalid.
It is not uncommon for employers to offer new hires contracts that limit their rights under the law. Tekna is sceptical of such blanket limitations—both because they undermine the employee’s interests, and because they are often used in situations where the employer has no reasonable expectation that the employee will produce inventions or similar results.
Such agreements can be particularly unfair when they result in the company gaining full ownership—not just usage rights—for inventions made far outside the employee’s job description and responsibilities.
We see that some employers use their strong bargaining position to secure advantages beyond what is reasonable, often in situations where there is no real negotiation—just a “take it or leave it” contract.
The Employee Invention Act aims to protect employees’ interests
Tekna believes this can hinder innovation and reduce employees’ opportunities to be recognised for their creative contributions. We believe that the solutions provided by law—the background law—generally strike a fair balance between the parties’ interests. It is therefore usually appropriate to let the contract refer to these legal provisions as the basis for the employment relationship. If no such regulation is included in the contract, the law will apply in full.
Note: The Employee Invention Act is intended to protect the employee’s position. The Copyright Act contains similar mechanisms to safeguard the author’s rights.
Tekna expects that companies seeking agreements that give them greater rights than those provided by background law should be able to explain their specific need for such deviations. We encourage members to ask their employer to justify why they should take ownership of inventions that are not necessary for the employment relationship to fulfil its purpose.
Agreements stating that your former employer may have rights to what you invent at your next job may function indirectly as non-compete clauses. If your new employer cannot own what you create, will they still want to hire you? Non-compete clauses must be financially compensated under Chapter 14 A of the Working Environment Act. No such protection applies to intellectual property clauses with post-employment effects.
As mentioned earlier in this article, consider the balance in the contractual relationship: performance for compensation. If the invention falls outside the scope of your paid work, is it reasonable for the company to take full ownership of the rights to commercialise it?
It is generally assumed that the unwritten rule on the transfer of copyright in employment relationships does not fully apply to scientific works created by researchers at universities and university colleges as part of their institutional work. The scientific purpose of the position is considered fulfilled through the research results. Therefore, the employer does not acquire the right to commercial exploitation under the general purpose-based rule.
In research projects conducted in collaboration with third parties, however, it is often explicitly or implicitly assumed that rights are transferred to the third party, shared with the institution, or subject to other limitations on the researcher’s use of the rights.
The right to commercially exploit inventions created by academic staff as part of their ordinary work at universities and university colleges may, following a legal amendment, be transferred from the employee to the institution. General rules therefore apply to this group.
To safeguard the principle of academic freedom to publish, these employees retain the right to decide whether research results should be published or patented, see Section 6. The freedom to publish does not apply during the first four months after notification, in accordance with Section 5. After this period, researchers are free to publish their inventions.
If the researcher chooses to publish the invention, the novelty requirement for patenting will prevent a patent from being granted, and the institution will lose the opportunity to establish exclusive rights to commercial exploitation.
To prevent the institution from acquiring exploitation rights, the researcher must publish the material within one year of the institution being notified of the invention’s existence, as stated in Section 5.
These special rules on transfer and publication aim to promote collaboration between researcher and institution, enabling patenting without compromising the researcher’s ability to publish. Publishing after a patent application has been submitted does not prevent patent protection.
Please note: Internal company policies (such as IPR policies) may set different conditions than those described here.
