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The site will give you an overview of Intellectual Property law and related procedures, and how these may differ from country to country.

Patents - Law on Employees' Inventions - Italy

In Italy, the right to employee inventions is governed by article 64 of Legislative Decree no. 30/2005 ("CPI"). The CPI comprises duties and rights of an employer and employee and sets up a detailed scheme for the ownership of employee inventions and the remuneration for the employee. 

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-When does the law on employees' inventions apply?

The CPI applies to inventions carried out by employees of private companies and public bodies within and during the employment relationship with the exception of researchers embodied within a public university or a public research entity.

In particular, the CPI distinguishes between: 

  • Inventions developed by an employee in the course of his/her employment relationship and where compensation for the inventive activity has been expressly agreed between the employer and employee ("remunerated inventions");
  • Inventions developed by an employee in the course of his/her employment relationship and where no compensation has been agreed for the inventive activity ("non-remunerated inventions");
  • Inventions made outside the scope of the duties assigned to the employee but related directly to the business of the employer or made with use of data or means, of whatsoever nature, of the employer ("occasional inventions"). 


-Is the employee obliged to notify the employer of an invention?

With regard to remunerated and non-remunerated inventions, there is no specific duty of notification of the invention but the invention should be brought to the attention of the employer as a part of the general employees' duties.

As to occasional inventions, the employee should provide the employer with a communication with details of any patent application they have filed. The law does not provide for any term for this communication. The employer enjoys a pre-emption right, to be communicated to the employee within three months from the above notification. 



-Who becomes owner of employee inventions?

IP rights on remunerated and non-remunerated inventions automatically belong to the employer. 


-Which duties do employers have in relation to employee inventions?

For inventions covered by the CPI, the ownership right belongs to the employer, he is free to file the patent application, but must observe the employee's remuneration right.

The employee only has the inalienable right to be identified as inventor in the patent application.


-Is the employee inventor entitled to additional remuneration?

The employee's remuneration for remunerated inventions is already provided in the employment contract as a part of the total remuneration. 

With regard to non-remunerated inventions, the employee is entitled to seek a "fair compensation". This right cannot be waived. 

Occasional inventions may be purchased or used by the employer subject to the payment of a fair consideration to the employee.



-How is the remuneration calculated?

According to the CPI, fair compensation for non-remunerated inventions is determined taking into account the importance of the invention, the role played by the inventor and any contribution granted by the employer. Moreover, Courts often apply the so called "German formula", according to which the compensation is determined by multiplying the economic value of the invention for a proportional value, determined by (i) the type of problem solved by the invention; (ii) the solution of the problem; and (iii) the task actually carried out by the employee.

As to occasional inventions, the remuneration shall be calculated by detracting a value corresponding to the possible contribution of the means/data belonging to the employer.



-Are contractual agreements possible?

Yes.


-Procedural Issues

The Enterprise Courts have jurisdiction on disputes arising from the application of the legal provisions on employees' inventions. In the case of disputes on the amount of the remuneration, an arbitration panel of three members may be appointed, deciding in equity. If the amount determined is manifestly unfair and incorrect, the parties may designate a judge. 


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