Vincenzo Iaia
The Italian law of 24 July 2023, No. 2023 amended, inter alia, Art. 65 of the Italian Industrial Property Code (IIPC) which regulates the allocation of patent rights for inventions by university researchers and professors. The provision also includes the inventions by researchers of public research institutions as well as those of institutes for hospitalization and care with scientific character. The guidelines issued on 30 September 2023 about commissioned research by private-sector entities, as regulated by Art. 65, para. 5, IIPC, complete the legal framework with the aim of fostering technology transfer and maximizing the value of this kind of inventions.
A the outset, it should be noted taht the reform abolishes the so-called professor privilege by attributing the patent rights arising from the invention made by a researcher or a professor during the execution of a research contract of within an employment relationship, even temporary, with a university, a research institution or an institute for hospitalization and care with scientific character to these latter entities. The former regime instead conferred patent rights to the researcher or professor. In any case, the moral right to be recognized as inventor is not impaired.
The automatic institutional allocation of patent rights does not operate for commissioned research by private entities. In this case, the Government issued specific guidelines to reconcile the competing interests at stake. On one side, universities et similia wish to increase the visibility of their outcomes through publications, preferably in open access. On the other side, private entities are interested in maximizing the commercial opportunities connected to such inventions. This could imply the need to keep information secret to prevent competitors from taking advantage of the published results. Being uncontested the principle of private autonomy, the guidelines identify three types of commissioned research based on the different “inventiveness” of the activity performed by the research institution:
- Mere service: the activity falls in the ordinary tasks carried out the by the research institution. It is therefore unlikely that the outcomes would be eligible for patent rights.
- Development: the tasks involve applied research on processes under development by the funder. The generation of new patentable inventions represent a possible outcome of such activities.
- Innovative research: this is the case where the subject of the contract is pure innovation. The research is likely to lead to a solution of a technical problem that may trigger patent rights.
The parties should reach an agreement on the terms of the collaboration before the beginning of the research activities. Art. 6 of the guidelines provides a list of the essential aspects that should be regulated, such as the regime of the background knowledge, that of the foreground knowledge, the dissemination of results, the confidentiality obligations.
If the research is mainly based on the background knowledge of the research institution, the parties are required to explicit the conditions for having access to such information and exploit them for commercial purposes, for instance through a license agreement.
Except the case of mere service performance, the terms of exploitation of the foreground knowledge represent a crucial part of the contract. If the results of the collaboration are eligible for patent protection, there are three possible avenues:
- Exclusive ownership of the research institution.
- Exclusive ownership of the funder.
- Shared ownership between the research institution and the funder.
This latter case is the most problematic because of the potential conflicts between the two parties and the consequent paralysis of the value-enhancement activities. It is therefore advisable to identify ex ante the party in charge for administering the exclusive rights.
Lastly, it is of utmost importance to specify the conditions for publishing scientific publications based on the commissioned research. As usually that information is confidential, it can be useful to implement an authorization mechanism operating with tacit consent or some embargo periods. All in all, despite private autonomy remains a central pillar of the governance of commissioned research by private entities, the anticipation of future conflicts to the contractual phase before the beginning of the collaboration requires close attention and far-sighted eyes to the check and balances embedded in the research agreement.
