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Employee inventions: a recent decision by the Supreme Court
星期一, 28 11月 2016 10:51

Employee inventions: a recent decision by the Supreme Court

Gilberto Cavagna

The Supreme Court has been called upon to decide over a case regarding employee inventions (sentence n. 20239 of Civil Section 1, published on October 7, 2016).

The underlying dispute of the claim involved recognition of fair prize requested by an employee in relation to several industrial inventions for which patents were granted by the company thanks to the activities of research and innovative breakthrough implemented together with other employees, with no specific compensation.

In the decision, the Supreme Court had the opportunity to make a point about several aspects and reaffirm certain principles regarding this matter.

First, the Court affirmed that, unlike service inventions – i.e. such as inventions created in fulfillment of an employment contract (and therefore already paid according to the terms of the contract) – “the employee’s service is not aimed towards pursuing an innovative and inventive result, so therefore, the achievement of this does not fall under the expected duties and is not explicitly compensated.” It is for these reasons that the law provides fair prize, instead of payment, due to the reason that fair prize indemnifies the employee of the right to use the invention on the company’s behalf.

Furthermore, in cases concerning inventions made by teams of employees, “the right to a prize does not constitute unitary right for all participants,” neither does it constitute a hypothetical necessary joinder. It is necessary to evaluate, case by case, the importance of the individual’s position. 

In this way, the criteria for determining if and to what extent an employee has participated in the creation of an invention and the criteria for quantifying the award “are substantially subject to the importance of the invention, tasks carried out and the perceived compensation of the inventor.” It is also very important to consider the worker’s contribution to the organization. This is what was the employee section of the Court of Appeals established with decision n. 8368 from April 9, 2014.

Useful clarifications for a matter (in this case, employee inventions) are happening every day and often are a source of critical information.

gilberto.cavagna@milalegal.com