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Inventions by the employee

If the invention is made by an employee, or by someone working to a contract, including consultancy, or out-sourced design work etc., which can be considered as subordinate work, the employee under certain conditions is entitled to a bonus, but the Company is the owner of the invention.

Many Companies name the inventors randomly, but this is not correct and is even dangerous. It is always good practice, where possible, to indicate correctly who the real inventors are and to keep a record of the real contribution of each one, with regard to the content of each patent application. Indeed, during the examination into merit, it often happens that the contribution of some inventors turns out to be not new and/or banal.

According to current Italian Law, with regards to inventions made by employees, that is, when there is a relationship of subordinate work, there are four different cases:

  • the employee-inventor is not entitled to any bonus;
  • the employee-inventor is entitled to a "fair bonus";
  • the employee-inventor is the owner of the invention but the employer has the right of pre-emption for the use or purchase of the patent;
  • a researcher working for a University or public research body has the right to a particular treatment.

The following cases may arise:

  1. an industrial invention is made during the performance or fulfilment of a contract or a relationship of work or employment, whereby the inventive activity is deemed to be an object of the contract or relationship and is rewarded accordingly and distinctly: the payment must be properly identified in the payslip. In this case the rights arising from the invention belong to the employer except for the inventor's right to be recognized as such; the inventor is not entitled to any bonus or compensation, if the inventive activity is paid to him regularly.
  2. no reward is laid down or established as a compensation for the inventive activity, and the invention is made in the performance or fulfilment of a contract or a relationship of work or employment. In this case too the rights arising from the invention belong to the employer, but the inventor is entitled to a fair bonus and retains the right to be recognized as the inventor.

In both these cases above the invention is made in fulfilment of an activity to which the inventor is bound by contract or by a relationship of work or employment. In the first case the activity is explicitly deemed to be inventive and is rewarded for the purpose of invention, whereas in the second case, though the activity possesses features that have an objective connection with the invention (for instance, research, experimentation, trials), it is not rewarded for that purpose. It should be noted that for a partner in a Company, a Chairman, Director, head of office, study and/or research, are not entitled to a fair bonus unless the inventive activity is explicitly expected and specifically rewarded. For State employees Art. 34 of the D.P.R. (Presidential decree) n. 3 (10.1.1957) and subsequent amendments is applied.

If the conditions identified above are not fulfilled, but the invention is performed in the field of activity of the company where the inventor is employed, then the employer has the right of pre-emption for the exclusive or non-exclusive use of the invention or for the purchase of the patent. In this case, the employer is also entitled to extend the patent to foreign countries or to purchase, for the same invention, patents already extended abroad. The right of pre-emption is subject to the payment of a royalty or a sum to be decided with the deduction of a sum corresponding to the assistance possibly received by the inventor from the employer. The right of pre-emption must be exercised within three months of the announcement of the patent being obtained. If due payment is not made in full at the due dates, the rights acquired by means of pre-emption are legally terminated.

When he works for a University or a public authority which has research among its institutional purposes, the researcher is exclusive owner of the rights deriving from the patentable invention of which he is the author. In the event that there are several inventors, all employed by the University, by the public authorities as above or by other public authorities, the rights deriving from the invention belong to all in equal parts, unless agreement has been made otherwise. The inventor presents the patent application and communicates this to the administration.

Universities and public authorities, to the extent that they are autonomous, establish the maximum amount of the royalties relating to licenses to third parties for the use of the invention, due to said University or public authority, or to the private financiers of the research, and also every other feature of the reciprocal relationship. In any case, the inventor has the right to no less than 50% of the proceeds or royalties earned from exploiting the invention. In the event that the Universities or public authorities do not make the provisions as set out in clause 2 of the above-cited article, then they have the right to 30% of the proceeds or royalties. If after five years from the grant of the patent the inventor or his successors in title have not started the industrial exploitation thereof, unless this derives from causes beyond their control, the public authority where the inventor was employed at the moment of the invention automatically acquires the free but non-exclusive right to exploit the invention and the patrimonial rights connected thereto, or to allow third parties to exploit it, while the inventor retains the right to be recognized as the author of the invention.

When a patent of industrial invention is requested by an inventor during the year after leaving the employment of the company or the Public Authority, the patent is deemed to have been filed during the existence of the agreement or contract of employment, on condition that the patent concerned falls within the field of activity of the company or Public Authority.

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