INVENTIONS BY THE EMPLOYEE

The field of inventions by the employee is disciplined by articles 2590 of the Italian Civil Code and 64 and 65 c.p.i.
Employees means executives, staff, clerks and workers, as per the provisions of art. 2095 of the Italian Civil Code.

The special law on inventions provides three different types of inventions by the employee.

The first is described in art. 64 c.p.i. wherein it is stated that the right to issue the invention, and every other right of an economic nature deriving from the invention, belong to the employer, and no payment is due to the employee.
The second type, disciplined also in the art. 64 c.p.i., concerns the case wherein no “payment is foreseen and established to compensate for the inventive activity, and the invention is made in the execution or performance of a contract or a relationship of work or employment; the rights deriving from the invention belong to the employer, but the inventor has the right to a fair recompense”.

This second case, according to the prevalent interpretation, deals with the so-called occasional inventions, the result of a due activity but not foreseen as inventive by the contract of work.

The third case (art. 64 c.p.i. too) is when the invention has no relationship with the employee’s activity, but “comes within the field of activity of the private company or the public administration for which the inventor works”.
In this case, the rights deriving from the invention belong to the employee-inventor, but the law recognizes to the employee the “right of pre-emption for the exclusive or non-exclusive use of the invention, or for purchase of the patent, as well as the right of the employer, for the same invention, to request or purchase patents abroad, against a payment of the rent or price, to be established with a deduction of a sum corresponding to the assistance that the inventor has in any case received from the employer in order to attain the invention”.
Finally, the art. 64 c.p.i. establishes that:
“For the purposes of the paragraphs 1, 2 and 3, the industrial invention for which the inventor requests a patent within one year of leaving the private company or the public administration, within whose field of activity the invention comes, is deemed to have been made during the fulfillment of the contract or relationship of work or employment”.

Art. 65 IPC is applied exclusively to inventions made by researchers obtained in the course of their activities in Universities and other public research bodies. It states:
“As an exception to article 64, when the work relationship is with a university or public administration having research among its institutional purposes, the researcher is the exclusive proprietor of the rights deriving from the patentable invention of which he is the author. If there are several authors, employed by the universities or aforesaid public administrations or by other public administrations, the rights deriving from the invention belong to all in equal parts, unless there is a different agreement. The inventor files the patent application and communicates this to the administration.
The Universities and public administrations, within the framework of their autonomy, establish the maximum amount of the fee for licenses to third parties for the use of the invention, due to the university itself or public administration or to private financers of the research; they also establish every other aspect of the reciprocal relationship.
In every case, the inventor has the right to no less than fifty percent of the proceeds or fees for the exploitation of the invention. If the universities or public administrations do not make the necessary decisions as per clause 2, thirty percent of the proceeds or fees shall be due to them.
After five years from the date of issue of the patent, if the inventor or his legal heirs have not begun any industrial exploitation, unless this derives from causes beyond their control, the public administration by which the inventor was employed at the time of the invention automatically acquires the free and exclusive right to exploit the invention and the patrimonial rights connected thereto, or to have them exploited by third parties, while the inventor retains the right to be recognized as the author of the invention.
The dispositions of this article are not applied in cases of research wholly or partly financed by private subjects, or research done within the framework of specific research projects financed by public subjects other than universities, bodies or administrations to which the researcher belongs.”