History of inventions by university employees
In the past, this environment had been seen, in particular by the legislator, as inadequate for the commercial exploitation of the knowledge developed, as it was considered an institution solely aimed at research.
In this context, the legal provision relating to the exploitation of ideas, and in particular of the patent applications that protect them, developed by university employees and researchers, fits in. The so-called professor’s privilege was introduced with the reform of the intellectual property code by law no. 383 of 18 October 2001, and provided that, unlike what happened outside universities and research centres, the researcher was the exclusive owner of the rights deriving from the invention of which he was the author. This differed significantly from what happened outside research centres, where, with some exceptions, the owner of the rights deriving from an employee’s invention is the company for which the inventor works. The only exception was in the case of research financed, even partially, by private entities, in which case the rights would be obtained from the private funder.
This situation, while on the one hand freed researchers to exploit their invention, implicitly introduced a significant barrier to entry, since, before being able to commercially exploit an invention, it is necessary to protect it, by filing patent applications, trademark registrations, or design registrations. These procedures entail costs, which researchers could not always afford independently, in addition to requiring delicate procedures to be carried out with the help of specialized consultants. Both of these needs have contributed to dissuading a large number of researchers from protecting, and consequently commercially exploiting, their ideas.
With the introduction of the reform of the industrial property code contained in Law 102 of July 2023, the legislation relating to inventions developed by university employees has been radically modified, effectively abolishing the professor’s privilege . In particular, in the new formulation, the rights deriving from the inventions of university employees now belong to the university itself, as is clearly evident from the text of the new art. 65 of the Industrial Property Code (cpi). This change, in addition to eliminating a legislative discrepancy, has the purpose of increasing the number of strategic patent applications filed by research institutions, preventing the risk of unpatented inventions due to the low awareness or the low economic possibility and propensity to invest of researchers, consequently hoping for an improvement in the commercial exploitation of researchers’ inventions. More than a year and a half after the law came into force, however, the hoped-for increases in the number of patent applications filed by universities and research centers are not yet seen, perhaps due to the greater bureaucratic complications related to patenting by institutions, and to mechanisms still to be tested.
Article 65 of the Italian Industrial Property Code in brief
Paragraph 1 of art. 65 of the Italian Industrial Property Code reports the fundamental modification made by the legislator, and in fact establishes that, when the invention is made in fulfillment of a contract or an employment relationship with the university, the latter is the owner of the patrimonial rights deriving from the invention. In particular, therefore, the inventions of all university employees, whether researchers, laboratory technicians, research fellows, or students, are the property of the institution for which they work.
The procedure to be followed includes the following steps (set out in paragraphs 2 and 3 of art. 65):
- The inventor must communicate his invention to the structure he belongs to, in particular generally to the technology transfer office (TTO), which is responsible for evaluating the idea itself,
- The structure, within 6 months (extendable by another 3 months) from the communication, provides for the protection of the invention. If the structure does not provide for the protection, or communicates to the inventor that it does not want to provide for it, the researcher is free to proceed independently,
- During this period, inventors are still required to maintain confidentiality regarding everything concerning the invention.
The following remain to be defined, through ad hoc contracts:
- the application of the same to undergraduate students, even if in almost all universities they are considered on a par with researchers,
- inventors’ fees,
- relationships with potential financiers.
Technology Transfer Offices (TTO)
In this context, TTOs acquire fundamental importance. These are internal structures of the university, which usually employ former researchers or former students, who are responsible for evaluating the quality, as well as the possible economic return of the inventions that are presented by researchers, in order to protect the most promising ones, allocating the budget that the university makes available in the best way. The purpose of the TTOs is to provide technical opinions to the internal university committees that then have the decision-making power regarding the matter of the protection of inventions.
In order to carry out this assessment, it is generally accepted that the TTOs can avail themselves of the collaboration of external experts, for example patent consultants in order to evaluate the patentability of the idea, or technical/economic consultants in order to evaluate its economic potential.
Subsequently, the TTO acts as an intermediary between the inventor and external consultants, in order to facilitate the procedures for protecting the invention. This also occurs in cases where the invention can be better protected by keeping it secret, and maintaining the know-how, rather than by filing a patent.
The TTO is also responsible for advising boards of directors on the protection strategy, in particular in which countries it is useful to extend protection, in addition to the maintenance of the securities obtained through the payment of taxes.
The case of funded research
Paragraph 5 of art. 65 of the Italian Industrial Property Code deals with the case of research financed, at least partially, by private entities. In this case, reference is made to the same principles that were taken into consideration in the case of the previous formulation of the article, namely that the main interest ( although not exclusive) of the University is to publish and disseminate its discoveries, while that of private entities is to rapidly valorize the invention from an industrial and commercial point of view.
In this case, broad discretion is left to the parties, who must define in advance, through a contract, which is outlined by the guidelines issued by the Italian Patent and Trademark Office.
In particular, the contract must explicitly define at least the following points:
- ownership of the invention, which in particular may belong to the research body (and in this case explicit mention is made of licensing agreements that allow the financing body to commercially exploit the invention), to the financing body, or may be jointly owned by the two bodies,
- methods of exploitation of the invention, in particular it is necessary to balance the publication needs of the University with the protection needs of the funding body,
- sharing of economic burdens, and enjoyment of the proceeds deriving from the exploitation of the invention.
Usually these contracts are drawn up, on behalf of the Universities, by the TTOs, under the guidance of the internal commissions for industrial property, and the internal legal offices.
Conclusions
Following these changes to the legislation, universities have acquired the right to their employees’ inventions, with the consequent burdens and honors. The work of the TTOs and the dedicated commissions is therefore important in order to optimize resources for the management of inventions, for the selection of the best forms of protection. A watchful eye must be especially dedicated to research funded by third parties, which must be carefully regulated in advance.
