Rights to Service-Related Works and Inventions in Uzbekistan

1) Who owns the rights to service-related works and service inventions created by an employee in the course of their employment?

In accordance with Article 34 of the Law of the Republic of Uzbekistan "On Copyright and Related Rights" No.42 dated July 20, 2006, if a work is created by an employee within the scope of their employment duties or pursuant to a work assignment from the employer (a work created in the course of employment), the personal non-property rights (specifically, the right of authorship and the right to the name) remain with the author.

At the same time, the exclusive rights to use such a work created in the course of employment, according to the Law, belong to the employer, unless otherwise provided for by an agreement concluded between the employer and the author.

2) What criteria determine whether a work or invention qualifies as service-related?

Uzbek law does not provide an exhaustive list of criteria. Under Article 34 of the Law “On Copyright and Related Rights”, Articles 1062 and 1087 of the Civil Code, and Article 10 of the Law “On Inventions, Utility Models and Industrial Designs”, a work or invention is considered employee-created if it is created in the performance of the employee’s duties or a specific assignment from the employer. The mere use of working time or the employer’s resources is insufficient. The right to obtain a patent belongs to the employer only if stipulated in the agreement. 

3) Which rights automatically vest in the employer and which require a separate assignment?

Under Article 34 of the Law “On Copyright and Related Rights” and Article 1062 of the Civil Code, exclusive rights to a work created in the course of employment automatically belong to the employer unless otherwise stipulated by agreement. The author’s moral rights remain with the author and are non-transferable.

A different rule applies to employee inventions: the right to obtain a patent belongs to the employer only if expressly provided for in an agreement (Article 1087 of the Civil Code; Article 10 of the Law on Inventions). Therefore, this right requires written contractual documentation.

4) Is an employer required to compensate an employee for a service invention or service-related work?

In accordance with Article 34 of this Law, the amount of author's remuneration for each type of use of such a work and the procedure for its payment are determined by an agreement between the author and the employer. Ten years after the work is made public or earlier, with the employer's consent the author acquires the full right to use the work and receive author's remuneration, regardless of the contract concluded with the employer. The law does not require the payment of additional author's remuneration over and above the salary, unless such an obligation is stipulated in the employment contract, the employer's internal regulations, or a separate agreement between the parties. Consequently, as a general rule, the creation of a service-related work is considered the performance of an employee's employment duties and is compensated within the framework of the established salary.

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?

The legislation does not establish an exhaustive list of required documents. To evidence the employer’s rights, it is advisable to execute:

• an employment agreement and job description;
• a specific assignment or technical specification;
• written notification of the created IP;
• an acceptance and transfer certificate;
• where necessary, a separate IP agreement.

The employment agreement should define the employee’s obligation to create relevant IP, the employer’s exclusive rights to employee-created works, the employer’s right to obtain patents for employee inventions, and the procedures for notification, remuneration, registration of rights, and confidentiality.

Legal basis: Article 34 of the Law “On Copyright and Related Rights”, Articles 1062 and 1087 of the Civil Code, and Article 10 of the Law on Inventions.

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, the applicable law is determined based on conflict-of-law rules, the law chosen by the parties, and the relevant mandatory provisions. Therefore, choosing foreign law does not exclude the mandatory rules of the country where the work is performed.

Rights initially vest in the legal employer and do not automatically transfer to a parent or other group company. In Uzbekistan, exclusive rights to employee-created works belong to the employer, while the right to obtain a patent for an employee invention belongs to the employer only if expressly provided for in an agreement.

Centralising IP ownership within a group requires intra-group assignment or licence agreements that comply with local form and registration requirements.

7) What risks arise if an employment agreement does not contain provisions governing service-related works and service inventions?

The absence of contractual provisions significantly complicates the substantiation of the employer's rights and may lead to disputes. The primary risks associated with the absence of provisions regarding works created in the course of employment and employee inventions in the employment contract are:

 

1. Risk of disputes regarding the ownership of exclusive rights.

In the absence of relevant provisions, it is more difficult for the employer to prove that the result of intellectual activity was created in the course of performing employment duties and qualifies as a work-related asset.

2. Risk of the work-related nature of the asset being challenged.

An employee may claim that the work or invention was created outside the scope of their employment duties, and that the exclusive rights therefore belong to them.

3. Risk of disputes regarding remuneration.

In the case of employee inventions, the absence of contractual provisions governing the procedure and amount of remuneration may lead to claims by the author and litigation.

4. Risk of inadequate protection of the employer's interests.

Without provisions addressing confidentiality, the assignment of rights, and the use of intellectual property following the termination of employment, it is more difficult for the employer to protect its rights.

8) Can an employee claim rights to a work or invention created outside working hours using the employer’s resources or while working remotely?

An employee may lay claim to certain rights; however, the scope and ownership of these rights depend on whether the creation of the object is linked to their employment duties. While the mere fact that company resources were used or that the work was performed remotely complicates matters, the key factor is the nature of the employer's assignment.

In accordance with Article 34 of the Law of the Republic of Uzbekistan "On Copyright and Related Rights" No.42 dated July 20, 2006, if a work is created by an employee within the scope of their employment duties or pursuant to a work assignment from the employer (a work created in the course of employment), the personal non-property rights (specifically, the right of authorship and the right to the name) remain with the author. The exclusive rights (and the employer’s right to a patent, if contractually agreed) turn on whether the creation falls within the employee’s duties or a specific assignment.

9) How can an employer protect its rights when the creator of a service-related work or invention leaves the company?

Termination of employment does not extinguish the employer’s previously acquired rights. To protect them, the employer should retain the employment agreement containing IP provisions, job description, technical assignments, notifications of created IP, and acceptance and transfer certificates. Upon termination, the transfer of materials and access credentials, as well as continuing confidentiality obligations, should also be documented.

Exclusive rights to employee-created works belong to the employer under Article 34 of the Copyright Law and Article 1062 of the Civil Code, subject to the statutory ten-year rule. The employer’s right to obtain a patent must be provided for in an agreement. Within four months after receiving the employee’s written notification, the employer must file a patent application, assign the right to file it, or keep the invention confidential.

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 use of artificial intelligence (AI) systems does not, in itself, alter the legal regime governing works and inventions created in the course of employment as established by the legislation of the Republic of Uzbekistan. The decisive factor is not the method by which the object was created, but rather whether it was created by an employee in the performance of their employment duties or pursuant to an employer's assignment.

Employers are advised to regulate the use of AI in internal policies and employment contracts, determine ownership rights regarding outputs generated using AI, and establish requirements for maintaining confidentiality and protecting trade secrets when working with such systems. Uzbek copyright (like most systems) protects works of human authorship; output generated autonomously by AI without a human creative contribution may not qualify as a protectable “work” at all, in which case the service-work regime would not attach.

Authors: Abdullaeva Mukarramkhon (Associate), Khamidova Olmoskhon (Council)