Rights to Service-Related Works and Inventions in Kazakhstan
1) Who owns the rights to service-related works and service inventions created by an employee in the course of their employment?
Under the laws of the Republic of Kazakhstan, the moral (non-property) rights to a service-related work always belong to its author, i.e., the employee. As a general rule, the exclusive (economic) rights to a service-related work, as well as the right to obtain a patent for a service invention, utility model, or industrial design, belong to the employer unless otherwise agreed between the employer and the employee. However, the law provides for certain exceptions where such rights may transfer to the employee, for example, if the employer fails to exercise its right to apply for patent protection for a service invention within the statutory time limit.
2) What criteria determine whether a work or invention qualifies as service-related?
A work qualifies as a service-related work if it is created by an employee in the course of performing their employment duties or pursuant to a specific assignment from the employer. The mere fact that a work is created during working hours or using the employer's property does not, by itself, make it a service-related work. An invention, utility model, or industrial design qualifies as a service invention if it is created by an employee in the course of performing their employment duties or a specific assignment from the employer.
3) Which rights automatically vest in the employer and which require a separate assignment?
The employee always retains the moral (non-property) rights, including, in particular, the right of authorship and the right to be identified as the author, and these rights cannot be assigned to the employer. As a general rule, the exclusive (economic) rights to a service-related work and the right to obtain a patent for a service invention belong to the employer without the need for a separate agreement, unless otherwise agreed by the parties. A separate written agreement is required only where the employer and the employee wish to establish a different allocation of exclusive rights from that provided under Kazakhstan law.
4) Is an employer required to compensate an employee for a service invention or service-related work?
Yes. An employee is entitled to remuneration for the use of a service-related work, as well as for the creation of a service invention, utility model, or industrial design. The amount, terms, and procedure for payment of such remuneration are determined by agreement between the employer and the employee. If the respective contributions of the employee and the employer to the creation of a service invention, utility model, or industrial design cannot be reasonably assessed, the amount, terms, and procedure for payment of remuneration are determined in accordance with the legislation of the Republic of Kazakhstan.
5) What documents should be put in place to establish and protect an employer’s rights to service-related works and service inventions? What intellectual property provisions should be included in an employment agreement?
Kazakhstan law does not establish an exhaustive list of documents required to confirm the employer's rights. In practice, it is recommended to have an employment agreement (or a separate IP agreement), a job description, a service assignment (where applicable), an acceptance and transfer certificate for the intellectual property, and, in the case of service inventions, the employee's written notification of the creation of the invention, as well as documents confirming the employer's decision to file a patent application, keep the invention confidential, or refrain from seeking patent protection. The employment agreement should also address the procedure for creating service-related works and service inventions, ownership of exclusive rights, the employee's obligation to notify the employer of service inventions, the terms of author remuneration, and the employee's confidentiality obligations.
6) How are rights to service-related works and service inventions allocated within multinational corporate groups and in cross-border employment relationships?
In cross-border employment relationships, the applicable law is determined in accordance with the conflict-of-law rules of the Republic of Kazakhstan. Pursuant to Article 1120 of the Civil Code of the Republic of Kazakhstan, intellectual property rights are governed by the law of the country for which protection is sought, while agreements relating to intellectual property are governed by the law applicable to contractual obligations.
The mere fact that an employer belongs to a multinational corporate group does not affect the initial allocation of rights to service-related works or service inventions. As a general rule, such rights belong to the employer that has the employment relationship with the employee. Where intellectual property rights are to be centralized within a corporate group in favour of a parent company or another group entity, the transfer of such rights must be effected through separate civil law agreements in accordance with the applicable legal requirements.
7) What risks arise if an employment agreement does not contain provisions governing service-related works and service inventions?
The absence of provisions on service-related works and service inventions in an employment agreement does not deprive the employer of the rights granted under the legislation of the Republic of Kazakhstan. However, in the event of a dispute, it may be more difficult for the employer to prove that the work or invention was created by the employee in the course of performing their employment duties or pursuant to a specific assignment from the employer and therefore qualifies as a service-related work or service invention. In addition, the absence of such provisions increases the risk of disputes regarding the ownership of exclusive rights, the amount and payment of author remuneration, and the employee's obligation to notify the employer of the creation of a service invention.
8) Can an employee claim rights to a work or invention created outside working hours using the employer’s resources or while working remotely?
Yes. The mere fact that a work or invention is created outside working hours or while working remotely does not, by itself, determine the ownership of intellectual property rights. A work created outside the employee's employment duties or a specific assignment from the employer does not qualify as a service-related work, even if the employer's property or other resources were used in its creation. Likewise, the right to obtain a patent for an invention, utility model, or industrial design created using the employer's information or material resources, but outside the employee's employment duties, belongs to the employee unless otherwise agreed by the parties.
9) How can an employer protect its rights when the creator of a service-related work or invention leaves the company?
The termination of an employee's employment does not, by itself, affect the employer's rights to service-related works and service inventions, provided that such rights arose in accordance with the applicable law. To protect these rights, employers are advised to maintain proper documentation relating to the creation of service-related works and service inventions, retain records confirming ownership of the relevant intellectual property rights, and include in the employment agreement or a separate agreement provisions on confidentiality, the transfer of intellectual property, and the employee's obligation to assist with the registration and enforcement of intellectual property rights after the termination of employment.
10) How does the use of artificial intelligence (AI) systems affect the legal treatment of service-related works and service inventions created by employees?
The legislation of the Republic of Kazakhstan does not currently contain specific provisions governing the impact of artificial intelligence (AI) systems on the legal regime of service-related works and service inventions. Where an employee uses AI merely as an auxiliary tool in the course of performing their employment duties, such use does not, by itself, affect the ownership of rights in the resulting work or invention. Employers are therefore advised to regulate the use of AI systems in employment agreements and internal policies, including provisions on confidentiality and the allocation of rights to intellectual property created with the assistance of such technologies.
Author: Timur Berekmoinov
