PATENT CO-OWNERSHIP

Before discussing co-ownership, even if the discussion is general and schematic, we must consider patent ownership in its more general forms.
Art. 63 c.p.i. states that the right to the patent belongs to the author of the invention. The right to the patent, however, must not be confused with the right to have the patent issued. This latter right does not come from presenting the patent application in the form and in the places prescribed by the law; it comes from exercising an inventive activity and is embodied by achieving an invention which possesses its own requisites, necessary and sufficient to obtain the patent.

The right to the patent, that is, the right to be the proprietor of the innovative idea, is a subjective right since the issue of the patent is not at the discretion of the Public Administration (in this specific case, the Italian Office of Patents and Trade Marks), it is an obligatory act: in fact, in the event of a refusal, the person entitled benefits from legal protection.

To be the proprietor of a patent, there is no legal limit either for juridical bodies - private and public - or for individuals. The only limits which exist, for individuals, are natural limits when it is considered impossible for the person in question, due to incapacity, to have performed the activity needed to achieve the invention.

The ownership of the right to the patent may be transferred. This may happen inter vivos or mortis causa.

A transfer inter vivos may occur in two different situations: the transferor has already filed the patent application or this application has not yet been filed.

If the patent application has already been filed, a deed of assignment must be signed before a public notary. The deed of assignment must be registered at the Registry Office, and sent to the Italian Office of Patents and Trade Marks for due registration.
This procedure applies if the patent application is Italian and the contracting parties are Italian. If the patent application is foreign, the procedures which have to be followed are laid down by the legislation of each individual State.
If one or both of the contracting parties are foreign - by nationality, by residence or by domicile, according to the case - and the patent title is Italian, the procedure indicated above must be followed, with some specific additional deeds.

If the patent application has not yet been filed, the transferor must give the purchaser all the documentation needed for a complete and thorough description of the invention, he must formally undertake not to communicate to others the content of the invention and not to file the inventive idea, either in his own name or in the name of third parties.
If the inventive idea is not yet the subject of patent protection and the inventive idea lacks the requisites of patentability, legal theory is not unanimous.
Some makes a distinction according to which of the requisites is lacking:

• if it is novelty which is lacking, the agreement of assignment must be considered null and void, unless the responsibility of determining the novelty of the inventive idea was expressly given to the purchaser;
• if it is the requisites of industrialisation and originality which are lacking, the agreement remains valid, given that it is possible for the purchaser to ascertain whether or not they exist, unless mistakes or false declarations by the transferor are discovered.

Other legal theory, on the contrary, does not make any distinction regarding the existence of the requisites of patentability, and states generally that, if even only one of them is lacking, the agreement of assignment is to be considered invalid.

In the absence of a specific norm regulating this case, and in the absence of unanimous legal theory, it has been said that it is the purchaser who assumes the risk, except only in the case of fraud committed by the transferor.

Succession mortis causa: it is possible to succeed to the invention mortis causa according to the general norms which govern succession.
These norms are applied irrespective of the fact that the inventive idea is, or is not, protected by a patent.