The Italian Supreme Court recently (and surprisingly) said that inventors must be named as co-defendants in revocation actions.
In 2010 I wrote a post concerning the requirement to name inventors as co-defendants in Italian revocation actions. I reported that the Court of Appeal of Milan had established a principle whereby named inventors had to be called in revocation actions and, if they were not, proceedings could not reach the stage of decision. This was based on the then in place provision of Article 122 (4) of the of Italian IP Code, according to which “Any action aimed at the revocation of an industrial property title shall be brought against all persons listed in the register as r [...]
According to the law on employee inventions, the inventor is entitled to information about all income generated by the employer from third parties in exploiting the invention. This information is the basis for claims of the employees against the employer for compensation. The Court confirmed the decisions of the lower courts and held that the income of the employer comprises all financial benefits related to the employees’ invention and its exploitation. This includes not only payments made to the employer but also other benefits such as patent protection.
Click here for the full text of this case.
A summary of this case will be posted on http://www.Kluweriplaw.com[...]
A patent can be re-assigned to the legitimate rights holder based on a claim of entitlement under Article 118 Italian IP Code, even when the patented subject matter differs from the invention made by the legitimate rights holder, when such differences do not involve an inventive step.
A summary of this case will be posted on http://www.KluwerIPCases.com[...]
In a decision of 9 February 2012, the Court of Appeal of Milan decided a case concerning the ownership of the rights over an invention allegedly made in the framework of a work-made-for-hire relationship. The case is interesting as Italian law does not explicitly regulate the case of inventions made for hire. Articles 64 and 65 of the Italian IP code, in fact, only consider cases in which the inventions are made in the framework of an employment relationship. In the case at issue, Gnutti S.p.A., the holder of a European patent and an Italian utility model concerning collectors to be used in air conditioning appliances, filed patent infringement proceedings against Aermec S.p.A. The latter, [...]
The Supreme Court confirmed the Court of Appeal’s decision that the certification of the status of creator of a technical achievement is an indispensable condition for monetary compensation of an employee by an enterprise. Since the plaintiffs have not requested or received any documents recognizing their status as creators of a technical achievement, their claim of monetary compensation has been rejected.
Two research scientists, involved with the synthesis of a compound which formed the basis of a patented heart imaging agent, brought what is the first ever successful action under Section 40 of the Patents Act 1977, arguing that the patents are of outstanding benefit to their employer, and as such, they are entitled to a fair share of this benefit. The Court concluded that the patents had been of outstanding benefit and having valued the benefit as in the order of GBP 50,000,000 awarded GBP 1,000,000 to the 1st Claimant and GBP 500,000 to the 2nd Claimant on the basis that: ‘The benefits [of the patent] went far beyond anything which one could normally expect to arise from the sort of work [...]