“Clariant Prodotti”Decision of the Supreme Court of Cassation of Italy, Civil Division, Section I (Corte Suprema di Cassazione, Sez. 1 Civ.) 12 December 2022 – Case No. 36140/2022; ECLI:IT:CASS:2022:36140CIV

In a service invention, the inventive step is a duty and to that end is to be remunerated. In a company invention, producing an inventive result is not part of the employee’s remit. Such results are not included in his or her duties but are linked to them as a product, neither due nor envisaged, of their work.Where the invention is the object of the work performed, the inventive result may or may not be present. If such a result does occur, it is already covered by the agreed remuneration. There is no scope for further remuneration in the form of fair recompense. This, rather, should be awarded when the invention is a chance and exceptional consequence of the work performed, since it cannot be foreseen that the employee’s normal duties might lead to an inventive result.The degree to which the employee’s agreed activities are or are not likely to produce an invention is irrelevant, since whenever that result is probable it should automatically be deemed to be included in the contractual provisions.The right to fair remuneration is not lost when an employer transfers a patent application or the rights to an invention to a third party.In cases of company invention, the employee’s right to a fair recompense and the employer’s corresponding obligation to pay it arise only when the patent is obtained. It is not sufficient for the innovation to be patentable but not yet patented.Since the right refers to an exceptional consideration taking the form of a one-off payment for an equally exceptional service consisting of an inventive result that is not included in the employee’s duties, the ten-year limitation period envisaged by Art. 2946 Civil Code applies. Said limitation period runs from the moment the right becomes claimable, i.e. from the date on which the patent is granted.The employer’s obligation to pay the employee a fair recompense for the company invention can be revoked only by the removal ex tunc of the patent, provided that it is removed as a result of a judicial declaration of invalidity issued principally and erga omnes. An interlocutory declaration of patent invalidity is not sufficient to this extent.It is not possible to challenge the existence of the right to fair recompense on the ground that the conditions for patentability are not met. Such is valid also for cases where the party that has patented the invention is not the employer but one of its successors, or where the application for the right to be declared null cannot be submitted because the patent has expired.