Employee’s inventions: a recent Italian decision

Companies often find themselves in big trouble when an employee during the course of his duties makes an invention that is particularly useful for the company.

Such situations are quite common and in the absence of a clear contract and without a specific wage that create conflict in the most critical cases.

There is indeed a well-defined regulation, but its interpretation is not always uniform.

Article. 64 CPI (Industrial Property Code) reads as follows: «1. When an industrial invention is made in performance or in execution of a contract or of an employment relationship, whereby the inventive activity is provided for as the object of the contract or of the relationship and for such purpose an employee receives compensation, the rights deriving from such invention are the employer’s, subject to the inventor’s right to be recognized as the author thereof. 2. If no compensation for the inventive activity is provided for and established, and the invention was made in the execution or fulfillment of a contract or of an employment relationship, the rights deriving from the invention are the employer’s, but the inventor, in addition to his right to be recognized as the author thereof, has the right, if the employer or his successors in title obtain the patent or use the invention in conditions of industrial secrecy, to a fair reward, the amount of which shall be quantified taking into consideration the importance of the invention, the tasks performed and the compensation received by the inventor, as well as the contribution that he has received from the employer’s organization. In order to ensure the speedy conclusion of the acquisition of the patent, and the consequent attribution of the fair reward to the inventor, an early examination of the application may be granted, upon a request from the employer concerned, for an early grant of the patent. (…) »

Both the conditions are necessary: a) that the inventive activity is provided as an object of the contract; b) that activity is “paid for that purpose”.

In several decisions we read that “the key distinction between the two cases lies mainly in the presence or absence of an express contractual provision to pay a special wage for the inventive step” (Cass. Civ. 21- 03-2011, n. above 6367; Cass. civ. 24-01-2006, n. 1285, Cass. civ. 06/11/2000, n. 14439).

We could come to say that the lack of a wage “specification” for the conduct of an inventive step does not satisfy the conditions mentioned in the first paragraph of art. 64 CPI.

However, a recent decision of the Supreme Court’s May 6, 2014 , also supported by other case-law (Cass. Civ. 06/03/1992, n. 2732 Cass. Civ. 05/11/1997, n. 10851) offers a different solution and seems to give a pre-eminent value to the contractual agreement as a whole.

In the case examined by the Supreme Court an employee was hired with design features that also included the contribution of improvements without the contract contains, however, explicitly inventive activity among specific functions. At the same time the employee was paid a high salary.

The Court found that in light of the content of the contract and taking into account the wage of the employee , the agreement between the parties also includes the inventive activity. The judges are then based on the interpretation of contractual intent that, despite the absence of explicit statements in a manner favorable to the company, let them know that the parties had intended to understand the object of the contract activity inventive although never explicitly named.

The Court, as well as the lower courts earlier, then rejected the claim of “fair compensation” advanced by the employee holding that the invention it was up to the company as the result of the work already paid.