The Jobs Act for self-employed persons determines who the rights on a new invention or a creative work made by an independent contractor belong to.
To whom do the rights on a creative work or an invention made by a third person belong? The inventor or to the buyer?
This is an ancient debate, often object of long Court cases, which have been given alternate solutions from time to time and not without difficulties.
However, in our legal system a new provision has been recently introduced which determines by law how to regulate the attribution of the rights when the work is commissioned to a self-employed person.
Law no. 87 of 22 May 2017, in force from 14 June 2017, the so-called “Jobs Act on self-employed persons”, has introduced the rules governing inventions and original contributions made by an independent contractor during the execution of the contract of professional work. These rules complement the legal provisions on the inventions of the employees, already contained in the Industrial property Code (article 64 C.P.I., “Inventions of the employees”) and in the Italian Copyright Law (articles 12-bis, 12-ter and 88 L.A.).
The new rule, contained in article 4 of the above mentioned law, states:
“Unless the inventive activity is foreseen as the object of the contract of work and to this end it is compensated, the rights of economic exploitation pertinent to the original contributions and inventions made during the execution of the contract belong to the independent contractor, according to the provisions of law no. 633 of 22 April 1941 and of the industrial property code, provided for in the legislative decree no. 30 of 10 February 2005”.
Therefore, a distinction should be made between two situations:
1) The contract explicitly stipulates the commissioning of an inventive/creative activity to the independent contractor which is compensated as such: in this case, the rights automatically belong to the buyer;
2) The contract do not explicitly stipulates the foregoing: in this case, even if the invention or the original contribution are realized in execution of the contract, the rights pertinent to them belong to the independent contractor himself.
It follows from the above, again and even more, that it is important to always prepare written, clear and well-structured contracts containing precise provisions regarding the attribution of those rights.
The cost of the contract represents undoubtedly a great investment which will make the buyer or the independent contractor earn the rights of exploitation of a work or an invention without having to discuss that in the courtroom.