As technology rapidly advances across the globe, a surge of novel inventions and creative solutions emerges, targeting pressing problems or enhancing existing practices. The growing focus on privatizing innovation highlights the significance of intellectual property and the need to establish a balance between the interests of all involved parties. This article outlines the process of acquiring and transferring works recognized as intellectual property in two possible scenarios: within and outside the scope of employment duties.

Prior to considering employer actions, it is essential to establish a clear understanding of key terminology employed within the Republic of Kazakhstan's legal framework, particularly the Civil Code, as it pertains to intellectual property. The category of intellectual rights encompasses a diverse range of rights, categorized into exclusive and non-exclusive, as well as property and non-property rights.

Exclusive rights grant the employer to control all aspects of using the work for both commercial and non-commercial purposes[1]. In the case of transferring exclusive rights, the employer has the right to dispose of the work at their discretion, including the option to transfer or sell it to third parties. On the other hand, non-exclusive rights grant limited rights to use the work. Here are some examples of using exclusive and non-exclusive rights.

Example: Suppose a company develops new project management software. If the employer obtains exclusive rights, it means they can freely use, sell, or license the software, as well as make decisions regarding its further distribution. In the case of non-exclusive rights, the company can only use the program for its internal needs, without the right to transfer it to third parties for commercial use.

According to the provisions of Article 31 of the Law of the Republic of Kazakhstan «On copyright and related rights» (hereafter – the Law), the property rights of the author, as specified in Article 16 of the Law, may be assigned in full or in part, and may be transferred for use under a copyright contract for the transfer of exclusive rights. Property rights include all rights related to the use of the work and income derived from it. Any assignment of property rights must be formalized by a written agreement signed by the author and the person to whom the property rights are assigned[2].

When transferring exclusive or non-exclusive rights, the author retains non-property rights, such as the right to recognition of authorship, the right to name, the right to protect the author's reputation, and the right to disclose the work in accordance with Article 15 of the Law. Non-property rights remain non-transferable and cannot be sold, ensuring copyright control over the works.

Example: Consider a scenario where an author creates a unique logo for companies. When transferring property rights, the company can use the logo for its advertising campaigns, products, and services, extracting profit from its use. Meanwhile, non-property rights, such as the right to recognition of authorship and the requirement to indicate the authorship, remain with the author. For example, the company must attribute his name when publishing the logo.

Let's consider the first scenario, where an employee engages in creative activities within the scope of their job duties. In this case, it is crucial to clearly define this responsibility in the job description and employment contract. For example, if an employee is involved in software development as part of their job duties, this should be specified in their job description. The process of defining and regulating this process in the company's internal documents is essential for determining rights to the created works. According to the decision of the appellate court, the program "L," sold by citizen A to LLC "G," is considered a work made for hire, as A worked at LLC "N" from October 1, 2010, to December 20, 2011, as the head of the information technology department, and creating computer programs was within his job responsibilities[3]. In this example of the court decision where the computer program was recognized as a work made for hire, the decisive factor was the inclusion of this activity in the employee's job duties.

In the second scenario, when an employee engages in creativity outside the scope of their job duties, the question arises about regulating the transfer of rights to the created work. The existence of a copyright certificate held by the employer does not imply ownership of exclusive rights, so a contract for the transfer of exclusive or non-exclusive rights is required[4].

After defining the scenario, it is crucial to clearly define which rights the employer wishes to acquire from the author when drafting contracts. Here are some key considerations:

• transfer of property rights: determine whether all or only part of the property rights will be transferred, and establish restrictions on their use, such as a prohibition on resale;
• term of the contract: copyright lasts for the entire life of the author and seventy years after his death, so understanding the desired usage period is important;
• territory of transfer of exclusive rights: determine the geographical territory within which the rights are transferred, for example, the whole world or only within a certain country;
• author's remuneration: the most important subject of any copyright agreement is the determination of the author's remuneration for the receipt and/or use of his work. Remuneration is determined in the copyright agreement in the form of a percentage of income for the corresponding method of using the work or, if this is impossible to implement due to the nature of the work or the peculiarities of its use, in the form of a fixed amount in the contract or otherwise.

This approach to drafting a contract will ensure clarity and fairness in relations between the author and the employer, as well as effective protection of the interests of both parties.

It is also necessary to consider step by step what actions the employer must take to acquire the work:

• registration of the work by the author in the authorized body to confirm authorship;
• transfer of the work to the employer by concluding a clear and detailed contract;
• transfer of the official work by an acceptance certificate and an order approved in the relevant organization  within the framework of the fulfillment of official duties.

Noting that the regulation of copyright in labor relations is a key aspect of intellectual property. Therefore, it is necessary to clearly define this process in labor documents in order to ensure clarity and fairness in relations between the author and the employer, as well as effective protection of the interests of both parties.