The patent rights coming from contracts for the supply of intellectual services

There is a new pronouncement (ordinance no. 15708 of June 14,2018 of the Court of Cassation)on patent rights coming from contracts for the supply of intellectual services and in particular on its qualification in light of Art. 64 I.P.C. (Industrial Property Code).

In the past (see our article of August 27, 2014) we already faced the problem related to the hard interpretation and application of the Art. 64 I.P.C.. The ordinance under examination is interesting because it represents an example of legal classification of the contracts given in light of the abovementioned provision.

In particular, the case examined by the Court of Cassation concerned a contract drawn between an inventor (as well as by his company, created for the exploitation of the invention) and another company. By this contract, the latter relied on the first one “for the execution of performances having as an object the study and planning of new systems of warming (…) in order to acquire the right to exploit the result of such activities of study and planning and eventually, if patentable, the co-ownership of the patents”.

In the judgement under examination, the Court of Cassation has classified the above contract as a contract of mutual interest characterized by a “facio ut des” exchange. Particularly, as a contract for the supply of intellectual services or an independent contract according to the nature of the subject doing the research. Moreover, the arbiters of legality connected this type of contract to the discipline of Art. 64, (1) I.P.C. on the so-called invention of service. In particular, the Court of Cassation has underlined that in this contract the parties explicitly — art. 64 I.P.C.“which field of application is not limited to work relations and the inventions of the employees, but concern all contractual typologies having as object an industrial invention”.

Considering the statements of the Court of Cassation, one could infer that in case an industrial invention is realized during a contract for the supply of intellectual services, the rights deriving from the invention are to be attributed to the employer.