In decision No. 36140 of 12 December 2022, the Italian Supreme Court confirmed an important principle concerning inventions developed by an employee and transferred by the employer to a different company (usually a parent company) which obtains the relevant foreign patents.
In particular, the Court dealt with the case of an Italian employee who had developed new catalysts which were subsequently patented in the USA and Europe by two separate companies belonging to the same Holding controlling the employing company.
The decision confirmed that as set forth in Art. 64 para. 2 of the Italian CPI (Intellectual Property Code), in the case of assignment of a mere invention (not necessarily of a patent) to third parties, the judge must establish whether or not the employment contract provides for an indemnity that serves as specific remuneration for the employee’s inventive activity.
If no such remuneration is fixed in the contract, then a fair extra indemnity is due to the inventor, for the determination of which will take into account the importance of the invention, the tasks performed and the salary received by the inventor, as well as the contribution he received from the employer’s organization.
In the subject case the Court also ruled that, in the case of an invention made in the absence of remuneration for the inventive step, the ten-year time limit for claiming such payment does not start from the date the invention is obtained (or transferred to a third party), but rather, from the date of the subsequent grant of the relevant patent.
Ultimately, this Supreme Court decision makes it even more important to draft “tailor made” employment contracts in Italy, so as to properly identify the type of inventions and other intellectual creations that can be generated by the employee, attributing their property to the employer as a result of a creative tasks widely described and expressly remunerated in the contract.
This article is authored by Renato D’Andrea, Of Counsel at our Italian member firm Lexellent and specialised in Intellectual Property matters interfering with employment law. The firm’s lawyers have extensive experience in handling complex employment-related matters, including multi-jurisdictional deals. Lexellent provides a broad array of legal services to address all issues arising in the area of employment law. With offices in Milan and Rome the firm is perfectly placed to respond to clients’ needs all over the country. Visit our Italian member’s website or contact its representative and Managing Partner Giulietta Bergamaschi.
