The result of research and development activity is hopefully an invention; this implies the necessity of establishing who is entitled to the authorship and patrimonial exploitation rights of the invention.
In our previous article (“Technology transfer as a value-enhancing development factor. The MUR and MDS Guidelines from Research to Business”) we have already seen how the traditional scheme of technology transfer, which involves the “delivery” of knowledge and technologies developed by scientific research to the business world, is being flanked by the participation of private companies alongside the traditional public entities, from the design phase of research initiatives and then with the participation in calls for tenders, as stated in the PNRR. (We have discussed this in two previous articles “The key role of the private companies in the technological development process: public/private partnerships” and “The first step towards the innovation process: Technology Transfer Centers-Innovation ecosystems and research infrastructures”.
Whatever the scheme, it is mandatory to protect research results and regulate their exploitation rights.
Who should be credited with the authorship of the invention?
The first question to be examined is who should be credited with the authorship of the invention.
The rules differ depending on whether the inventor carries out the work at a University or Research entity or a different organization.
Article 64 (Employee Invention) of the Italian Industrial Property Code (Legislative Decree 30/2005) states:
- When the industrial invention is made in the performance or fulfilment of a contract or relationship of work or employment, in which the inventive activity is provided for as the object of the contract or relationship and for that purpose remunerated, the rights arising from the invention itself belong to the employer, except for the right due to the inventor to be recognized as its author.
Conversely, when the inventor is a researcher at a University or a research organization, in that case, Article 65 of Legislative Decree 30/2005 provides that
- (...) the researcher is the exclusive owner of the rights from the patentable invention of which he is the author.
The rules for funded research are different; paragraph 5 of Art. 65, in fact, states
- The regulations of this article do not apply in the case of research financed, in whole or in part, by private entities or carried out within the framework of specific research projects financed by public entities other than the university, entity, or administration to which the researcher belongs.
The scenery could be simplified in the coming months, as with the DDL of 6/4/2022, the Italian Council of Ministers approved the draft law amending the Industrial Property Code, providing for the attribution to universities and research organizations of the right to patent all inventions made by their researchers as well as the property rights to the invention.
In a complex regulatory framework such as the one outlined, the development of research and development projects involving multiple parties, both public and private, cannot disregard a contractual discipline that regulates the industrial property of the invention.
Contractual protection
Whether it is a mere project financing for the development of new technology or a broader partnership, the parties must establish in advance and detail, for example
- who will have the right to apply for the patent and possibly provide for co-ownership
- how expenses are allocated
- the options for the other parties to act if those with the right do not file patent applications or files it only limitedly in some countries while it may be in the interest of the others to extend the territorial protection of the patent
- the possible assignment of the property rights or
- the licensing of the use of the patent and their limits (e.g., exclusivity zones, time limitations).
For proper management of the relationship between the parties, all these aspects should be addressed and included in a contract before the research project or partnership begins.
The ancient adage “prevention is better than cure” applies in this area, especially when the cure can result in lengthy and costly disputes over industrial property rights, risking undermining the successful outcome of the research activity and preventing its economic exploitation.
Contractual protection even during negotiations; confidentiality agreements
Parties who intend to develop a research project together must necessarily share confidential information from the preliminary and verify feasibility stages.
For the exchange to take place with greater serenity and transparency, the parties should always take care to sign a confidentiality agreement, aimed at establishing
- what confidential information will be exchanged
- the obligation of confidentiality for all parties, which the parties must enforce on their staff and employees
- the prohibition of disclosure
- how the information will be exchanged
- the sanctions in case of a breach.
Only patentable inventions?
In reality, research and development activity can lead to results that are not affected by patent protection but are still the possible subject matter of IP rights.
Here I would like to draw attention to two possible results of the research activity.
Software
Research results increasingly emerge as software, either stand-alone or incorporated into other products or devices.
Often authorship and property rights are not fully regulated; on the other hand, it may not prove simple because of software:
- may be protected under copyright law and thus as intellectual property
- or it may be the subject of a patent application if it has the characteristics of novelty, and originality is suitable for industrial application and offers a solution to a technical problem.
However, the parties may provide for both scenarios and regulate future patent rights as a result.
Databases
Databases are also subject to protection; they may enjoy copyright protection if they are original creations, especially in the organization of the data, or the author may be granted the sui generis right, to protect even a substantial investment.
In the development of research projects, it is common to create databases; these represent economic value not only within that particular project but access to that data could be fundamental to future projects and therefore the subject, for example, of a license for use.
Before we can talk about licensing the use and exploitation of databases, it is necessary, as always, to establish who owns the authorship and patrimonial rights.
In conclusion, the articulation from a technical-scientific point of view of a research and development project must always be supported by precise contractual agreements between the parties, agreements that are necessary "tailor-made" and perfectly fitting concerning a specific project.
Only in this way will the desirable result of the research activity be economically exploitable and can be the subject of technology transfer and thus of enrichment both for the project partner and for those who will profit from it.