Patent: Who is entitled to the rights of an invention of an employee?

Who is entitled to the rights of an invention of an employee?

In order to establish the association between employer and employee in relation with inventions, we need, first of all, to look at the contract agreed between the two parties, to consider if there are any special clauses regarding this, and to establish exactly what are the duties for which the worker has been employed.

Often, in the working relationships with some private firms, specific conditions are put in the contract favouring the employer in cases where the employee creates an invention. Should this not be the case, then the general rules stated by the Art. 64 of the Industrial Property Code apply. Above all, this provides that, if the invention has been made by a worker employed with duties as a researcher, therefore inventive, then the patent goes by right to the employer, and the worker can only be recognised as the inventor from the moral point of view, but without any economical return as this is already provided for in his salary.

On the other hand, if the worker has not been employed as a researcher, therefore not paid to create inventions, but the invention has been made during his work, the rights arising from this still belong to the employer, but a compensation is also due to the employee, to be calculated bearing in mind the importance of the patent, the duties and retribution of the employee and the help offered to him by the company organization. On the other hand, when the invention has been created outside of the working relationship but is still pertinent to the sector in which the firm operates, the employer has an “optional right” to purchase the patent, in actual fact, a right already existing in the present regulation, which, even if it talks about “pre-emption”, has always been interpreted by the jurisprudence as a true and proper option.

In order to apply this right, the employer must pay the price as established, calculated by subtracting from the related amount the assistance given to the worker by the company to realize the invention. This to be done within three months from notification of the filed patent application, and not starting from the granting of the patent which, as renown, comes after a long time from filing it. In case there is a disagreement on the price to pay, a college of arbitrators is available to establish the actual due sum.