With a recent ruling (no. 12048 of 28 October 2015) the Court of Milan pointed out some principles in relation to the issue of “fair compensation”, i.e. the remuneration payable to the employee of the company that has carried out an invention during is normal working activity.

When the employee is entitled to ask for a “fair compensation”

In the case examined by the Court of Milan, the invention was developed by an employee of an Italian company and was subsequently patented by a foreign subsidiary, to which the Italian company had assigned the rights to the invention.

According to art. 64 CPI, a fair compensation is due to the employee if the employer or his successors are able to obtain a patent out of the invention or to use the invention in a regime of confidentiality.Therefore, any transfer of any right on the invention by the employer to other employer’ affiliates, or to any other third party, is irrelevant to the occurrence of the employee’ right to receive a fair compensation.

In fact a precondition for the legitimization of the employee to demand payment of “fair compensation”, is that the subject against whom the request of payment is made, coincides with the employer in whose workplace the invention was made.

The objection of patent nullity In seeking to avoid payment of the fair compensation, the employer had objected that the invention lacked of legal requirements for patentability. The Court has, however, made ​​it clear that if the right of a fair compensation arose, as a consequence of the grant of a patent on the employee’ invention, to extinguish such a right it is necessary that the patent is withdrawn with retroactive effect. Therefore the Court maintained that it is not sufficient for the defendant to object the lack of legal requirements to the invention’ patentability, but it is necessary to ask for a specific statement of patent withdrawal with retroactive effect.

Essentially, the employer should have made a counterclaim for invalidity of the patent to withdraw it retroactively, to avoid payment to the employee of the fair compensation.

“Invention of service” and “invention company”. For the purposes of the right to a fair compensation, it is necessary to distinguish between two types of invention, which are united by the fact that they both originated by the employee’ research activity.

The difference between the two types of invention, consists of the remuneration of the inventive activity, therefore an “invention of service” occurs if, in the employment contract, the parties have agreed upon a specific salary for the performance of inventive activity; while the “corporate invention” occurs if the parties have not agreed upon a special remuneration for such activity.In the case of “invention of service”, the employee is entitled to be compensated for the results achieved with the “fair compensation” provided by the law.

In the case examined by the Milan Court, the employer has not proved the existence of a specific contractual provision for salary paid against the performance of a research and invective activity, nor had actually demonstrate to have paid anything for this purpose to the employee, who was consequently entitled to receive a “fair compensation”.