Cavagna analyzes joint ownership Patents

| Press

Il Giornale dell’Ingegnere publishes an article on joint ownership of patents written by Gilberto Cavagna, partner at Andersen in Italy specialized in the protection of intellectual property rights.

Cavagna explains that joint ownership of patents is subject to a particular discipline and ihas been criticized. In the article he also highlights what solutions the individual owner can adopt.

If an industrial property right belongs to more than one subject, the relative faculties are governed, unless otherwise agreed, by the provisions of the Civil Code relating to communion insofar as they are compatible. However, the application to intangible assets, such as patents, of rules originally designed for tangible assets has been criticized.

Moreover, the exploitation of industrial property rights in communion is a problematic aspect of the discipline. The Civil Code merely provides that “Each participant may make use of the common thing, provided that he does not alter its purpose and does not prevent the other participants from making equal use of it according to their right”.

Cavagna analyzed the different options regarding assignments and licenses of the shared right.

Regarding the disposal of a shared right, the consent of all participants is required for acts of alienation, according to Article 1108 paragraph 3 of the Civil Code.

For the licensing of an industrial patent, there are different schools of thought, but in jurisprudence the qualified majority of the co-owners has been considered necessary.

The transfer of a single share to another party, however, is always free, while the licensing of the single share is mostly denied.

Finally, the eventual dissolution of the communion can be requested at any time.