Cosa si può brevettare

The right to a patent held by the author of the invention or of the model or of its assignees.
When the invention (but the same applies to the utility model) is made in executing or fulfilling a contract or a work relationship or use, where the inventive activity is provided as the subject of the relationship, and for this purpose paid, the owner of the patent right is the employer, while the author of the invention has the right to be recognised as its author.
If, however, despite there being a work relationship, the inventive activity is not the object of such a relationship, the employee-inventor also has a right (if the employer obtains the patent) to a fair prize.
Outside of the two previous situations, the employer only has an option right if the obtained invention is included in the company's activity.

More in detail:

Inventor employees of the company. In Italy, like in many other countries, the inventions developed in the presence of a subordinate working relationship are assigned, in principle, to the employer. However, art. 64 of IPC distinguishes three different situations:

  • if the industrial invention is realised in the execution of a contract or of a work relationship where the inventive activity is provided as the object of the contract and for this purpose paid, the rights deriving from the invention itself belong to the employer
  • if remuneration in compensation of the inventive activity is not provided, the rights deriving from the invention belong to the employer but the inventor, except for the right to be recognised as such, is due, should the employer obtain the patent, a fair prize: when determining the prize, the importance of the protection conferred to the invention by the patent, the tasks performed and the salary received by the inventor, as well as the technical support the latter received from the company organisation are considered
  • in the case of industrial invention falling within the employer's field of activity, the latter has the option right for the exclusive or non-exclusive use of the invention or for the acquisition of the patent, as well as the right to request or acquire patents abroad for the same invention, against payment of the fee of the price, to be set with a deduction of a sum corresponding to the assistance the inventor received from the employer to obtain the invention. However, the option right has a limited duration, as it must be exercised within three months from receipt of notice of the filing of the patent application. In this case it is also an occasional invention.

 

Inventions in Universities. Art. 65 of the IPC provides that, when a working relationship exists with a University or a Public Administration which has research among its institutional purposes, the researcher is the exclusive owner of the rights deriving from the patentable invention of which it is the author. In the case of multiple authors, employees of Universities, of the above-said Public Administrations or of other public administrations, the rights deriving from the invention belong to all in equal parts, unless otherwise agreed.

Consultants. It is becoming more frequent that the execution of the inventive activity is entrusted to self-employed persons. In Italy research contracts strongly differ because of the public or private qualification of the parties, but also for the object of the contract itself. They are generally traceable to the tender or work contract scheme and must be carefully defined and provided.

Joint inventors. When more than one person significantly contributes in designing and realising an invention, these people are defined as joint inventors and, for this reason, must all be expressly mentioned in the relative patent application. If the joint inventors are also those filing the relative patent application, the latter will be granted to them jointly.

Joint owners. This is a group invention. The application and exploitation of patents, whether belonging to more than one entity or people, are due to all joint owners and are governed by the rules on communion. The joint owners must jointly and severally pay the patent fees.
The owner of the patent right can personally file the application or elect a representative chosen from among the consultants in industrial properties, registered in specific professional register held by the Italian Patent and Trademark Office, or from among the lawyers registered in the relative registers.
The appointment of the representative can be made in the filed application; if so, the application must be jointly signed by the applicant and by its representative. Also, the appointment can be made by separate deed, which may consist of a power of attorney or in a letter of appointment.
The power of attorney is a document drawn-up by a notary with which appointment is conferred to follow any procedure before the IPTO without having to specify the object, nor to which applications (trademark, patent or decorative model or other) the power of attorney refers.
The letter of appointment can be single or multiple, depending if it concerns, respectively, a single application or more patent applications (that must always be indicated in the letter). It can also be:

  • specific: as it contains the detailed indication of the services that the consultant must perform (the domicile, the partial or total course of the filing of the patented application, the advice in the case of objection, the appeal of the Board of Appeals against refusals, etc.)
  • general: as the conferred appointment refers to the entire course to obtain the requested registration, as well as the processing of all matters relating to any dispute.

A € 16.00 revenue stamp must be affixed on the letter of appointment.

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