202110.01

Some notes on intellectual property when employing and outsourcing

The awareness of intellectual property in enterprises is being raised as intellectual property rights increasingly assist enterprises in asserting their position in the market as well as creating a solid foundation for product development. business. Not only a trademark (brand), an enterprise can also be the owner of many different intellectual properties such as patents, product designs, business secrets, product creation formulas, etc.

Usually, when it comes to intellectual property disputes, we often see disputes between one company and another, one individual with another, but do not know that internal disputes also occur a lot. , causing serious consequences and arising right in the day-to-day operations of the business.

Currently, in order to create a competitive advantage, enterprises are always developing new products. Products can be computer programs, games, movie scripts, websites, logos, business plans, marketing plans, training materials, patents, industrial designs, trade secrets, etc., and each product may include many different intellectual property objects. For example, Game software may include copyrights, patents, trade secrets. To create these products, businesses must hire workers or outsource such as consultants, advisors, contractors, suppliers, etc. Therefore, in the working process, assigning jobs can lead to to an internal dispute between the enterprise and its employees or a dispute between the enterprise and an outside party. This dispute will cause huge damage, especially in terms of time and finance, disrupt business and often difficult to prove. Therefore, the prevention of intellectual property disputes with employees/outsourcers is an issue that businesses are concerned about.

Recently, there have been many Vietnamese technology forums raising their views on the dispute related to NextTech suing Fiin and Mr. Ta Thanh Long – Fiin co-founder (also a former employee of NextTech) for infringing on copyright. intellectual property under Clause 6, Article 28 of the Intellectual Property Law “copying works without permission of the author or copyright holder” and Article 127 of the IP Law “infringing upon rights to business secrets” and Article 127 of the IP Law “infringing upon rights to business secrets”; at the same time, violate the confidentiality and non-compete commitments that employees have signed with NextTech. Before the evidence presented by NextTech, Fiin had to officially apologize and propose compensation. As a result, NextTech accepted the compensation and withdrew the lawsuit.

In the process of working with employees or assigning work to an outsourcer to perform the work, the employee or the outsourcer can easily access documents, intellectual property, and trade secrets. Therefore, if the enterprise does not apply the regulations on confidentiality; clear and close agreement with employees and outsourcers on the right to access and the obligation to keep information confidential; and at the same time disseminating and clearly explaining to employees that such regulations, disputes are likely to arise.

ĐTo avoid unnecessary disputes over intellectual property when employing and outsourcing, the following issues should be paid attention to:

Firstly, enterprises need to have regulations and employees/outsourcers must clearly understand those regulations so as not to accidentally violate the regulations and policies of the enterprise.

Before agreeing and signing labor contracts, enterprises need to actively set out their policies, regulations and labor rules, including: types of intellectual property within the scope of their business. employers and employees’ obligations to notify employers of intellectual property, employers’ procedures for handling intellectual property notices, regulations on management and exploitation of intellectual property, requirements for protection and protection of inventions, and remuneration for inventors, etc. These provisions must be in accordance with applicable intellectual property and labor laws.

Second, negotiate confidentiality and non-compete terms into the contract prior to employment.

Regardless of any contract between an enterprise and an employee, the outsourcer must establish a written contract. In addition to the agreement on the owner of the intellectual property right, the transfer of the right, the time of the right transfer, the issue of improvement, modification of the intellectual property, etc., the parties can sign an agreement (article) clause) separately regarding information security and non-competition.

Accordingly, in terms of confidentiality and non-compete, there are usually 2 very important aspects:

(i)(i) Employees and outsourcers need to comply with confidentiality obligations, even after the termination of the employment or contractual relationship. This regulation is completely in accordance with the law, specifically, based on Clause 2, Article 21 of the Labor Code 2019 “when employees work directly related to business secrets or technology secrets according to Under the provisions of law, the employer has the right to agree in writing with the employee on the content and duration of protection of business secrets, protection of technology secrets, rights and compensation in case of violate”.

Many businesses even agree that employees are not allowed to compete with the company after a specific period (usually 3 months or 6 months or a year after the termination of the labor contract).

(ii) Regarding the scope of information, each job position will have its own confidentiality agreement. Because businesses tend to divide employees into many departments, each employee or department only takes on a certain job or function. The number of people who know all information, documents, technical solutions and technology of enterprises is very small.

Third, businesses need to be careful when using outsourced research and development (R&D).

In principle, an enterprise that signs a contract to use an outsourced product to create a new product will own any rights to the intellectual property, unless otherwise agreed. However, if the parties do not have a written agreement on the transfer of such intellectual property rights to the enterprise, the enterprise will not have the right to own the intellectual property that has been created even though payment has been made. money to make.

Therefore, in the case of enterprises outsourcing to participate in R&D activities, it must be ensured that all participants sign an agreement that allows the enterprise to have sufficient rights to the intellectual property created as well as transfer any or all rights to the results of the R&D project to the enterprise, including the right to reassign those rights and, in particular, the right to modify the works if the R&D project produces works or other materials eligible for copyright protection.

Last, not least, businesses need to pay attention to the issue of legal advice. This will help businesses’ agreements be tighter, better applied in practice, and at the same time offer solutions to prevent disputes, avoid causing great damage in terms of time, effort and costs. fees for businesses. However, if all measures have been applied, but the dispute still occurs, the legal counsel will advise the parties on the most effective dispute resolution strategy. Therefore, the sooner the business consults, the more risks will be avoided.

So how to resolve disputes effectively? Please follow the next article on the topic of dispute resolution when employing and outsourcing.

Dang Thai Khang, Le Phuong Thao.

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