Il The new text of Article 65 65 of the Italian Industrial Property Code marks a reversal of the trend with respect to the rule that a researcher employed by a university or a public research institution is the exclusive owner of the rights arising from the invention of which he is the author.
In fact, the previous text had long raised doubts of constitutional illegitimacy in doctrine,since it introduced a disparity of treatment between researchers from universities or public research institutions, and researchers employed by private research organizations (even if subject to control by public bodies), in open contrast with the principle of equality enshrined in Article 3 of the Constitution. Furthermore, the previous Article 65 was in contrast to other countries, which unanimously recognize that research institutions have the rights to inventions made by their employees.
The novelties of Article 65 65
With the reform of Article 65, the situation in which the entities found themselves in the face of the non-patenting of the invention by the employee has also ended. The old text imposed an obligation to communicate the filing of the patent application on the employee, but provided nothing in the case of non-patenting by the employee-researcher, to whom the university institution could not replace.
The reversal of the so-called “professor’s privilege” in favor of universities (including non-state universities legally recognized), public research institutions and IRCCS takes place through a mechanism that attributes in the first instance the ownership of the rights arising from the invention to the structure to which the inventor belongswithout, however, this being an automatic process: it will be up to the university institution to take action to file the patent application and, only in the event of inertia or express expression of lack of interest on the part of the entity, the inventor may proceed independently to the filing.
Therefore, the legislative barrier that long prevented Italian universities and research institutions from exploiting the knowledge developed in the context of their programs has finally disappeared, and they can now finally fully devote themselves to the valorization of the results of scientific work of industrial interest.
It is inevitable to expect universities to pay more attention to the identification of new tools and internal processes to valorize the results of scientific and technological research: it will be the universities themselves who will have a renewed interest in identifying the objectives of scientific research, through the creation of projects with practical purposes up to the achievement of innovative results that, when adequately protected, can be implemented in the context of industrial applications.
In this new arrangement, we need to mention also the new Article 65-bis CPI dedicated to technology transfer offices, composed of specialized staff, destined to be an innovative channel of dialogue between the research system and the industrial system. This is certainly the most significant programmatic aspect of the reform of Article 65, because it finally recognizes a structure that contributes to the development and support of new technologies (through activities of evaluation, protection, marketing and commercialization of intellectual property), which prevents the dispersion of scientific knowledge worthy of being valorized and at the same time is able to effectively convey it to companies (which often need to be “accompanied” in the full understanding of new technologies in order to find application in industrial contexts).
Consequences and perspectives
In the meantime, we wait to see how the new rules will be applied and how the research institutes and the new structures for technology transfer will operate in practice. The process designed by Article 65 deserves the credit for having finally aligned Italy with (not only) European policies on technology transfer and innovation; it remains to be seen, however, whether this new mode of transfer of scientific and technological results will be able to effectively break down the barriers between research institutions and companies, promoting the innovation process and, consequently, the development and competitive growth – which remains the primary objective of the reform under consideration.
