Patent Commission
DR n.5/2023 establishes and regulates the activities of the Patent, Technology Transfer and Spin-off Commission of the Università Mediterranea.
The functions of the Commission:
- Carry out investigative and consultative functions on the scientific and relevant aspects concerning all activities, initiatives and proposals relating to industrial property, technology transfer and spin-offs.
- Provide opinions to the Board of Directors in the following cases:
- Proposals for the transfer of inventions and technologies to the University.
- Proposals for the valorization and economic exploitation of inventions and technologies owned by the University.
- Negotiations regarding the economic exploitation of inventions and technologies.
- Complex clauses relating to industrial property rights of the results of activities commissioned or carried out in collaboration with third parties.
- Applications for the establishment of spin-offs and start-ups, evaluating the scientific quality of the project, the possibilities for industrial development, the composition of the share capital, the commitment of the proponents and the overall coherence of the request.
- Involvement of university staff in spin-offs or start-ups and detection of controversial situations, especially incompatibilities.
- Promote, supervise, evaluate and monitor:
- Valorization and exploitation of inventions.
- Coordination of promotion, information and monitoring activities regarding spin-offs and start-ups.
- Establishment of spin-offs and start-ups, verifying the scientific quality of the project and compliance with legal requirements.
- Issuing opinions on the adequacy of proposals for the establishment of spin-offs and start-ups and on the University's participation in the capital of a spin-off.
- Annual review of the activities and results of spin-offs and start-ups, presenting a monitoring report to the Board of Directors.
- Evaluation of the opportunity for the University to remain in the spin-offs.
- Propose the assignment of mandates to industrial property consultants for the patent protection of the inventions owned by the University.
- Integrate the Commission with expert evaluators in the relevant disciplinary sector, if necessary.
Carry out any other task relating to spin-offs, start-ups and industrial property not assigned to other bodies by University regulations or other provisions of law or the Statute.
Patent Application
Following the amendments to the Industrial Property Code (Legislative Decree no. 30/2005), Article 65 has been rewritten, establishing specific obligations for the inventor and new procedures regarding patent protection of research results.
According to the new law, inventors can no longer proceed autonomously as in the past to file an inventive idea in their own name, since, pursuant to the aforementioned provision, " when the industrial invention is made in the execution or fulfillment of a contract or of a work or employment relationship, even if for a fixed term, with the University [...], the rights arising from the invention belong to the structure to which the inventor belongs, except for the right of the inventor to be recognized as its author ". In the event of multiple inventors, then, " the rights arising from the invention belong to all the interested structures in equal parts ", unless otherwise agreed between the parties.
Inventors are required to promptly communicate to the relevant University Office (and in any case before each filing) the object of the invention and any research results susceptible to protection.
In the absence of such communication, art. 65 CPI expressly establishes that " the inventor cannot file the patent application in his own name ".
Once the first and fundamental dialogue between the inventor and the relevant Office has been activated, with the parties having the obligation to maintain absolute confidentiality regarding the invention, the University, " within six months from the date of receipt of the inventor's communication, files the patent application or informs the inventor of the lack of interest in proceeding with it ".
Only in the event that the University does not provide for this within the six months required by law or expressly communicates that it has no interest in doing so, the inventor may proceed independently to file the patent application in his own name.
The new rule imposes another procedure to be followed in all cases of patentability of the inventive idea of the professor/researcher linked to the University by a subordinate employment relationship, who is now required to submit to the Office a communication containing the patent dossier. The Office in charge will then verify the regularity of the documentation presented and it is the task of the decision-making bodies to evaluate the interest or otherwise in proceeding with the filing of the patent application, communicating, within certain times, the relative outcome to the inventor.
Without prejudice to the moral rights recognized to the inventor or inventors on the paternity and integrity of the invention, the University is entitled to all patrimonial rights deriving from the inventions of its employees, by reason of the prevalence of institutional ownership over the individual ownership of the subject linked to the University by a subordinate employment relationship, without prejudice to the provisions of the University Regulations on patents and technology transfer regarding the distribution of proceeds deriving from the exploitation of research results susceptible to protection.
For any further clarification on this matter, please contact the Research, Technology Transfer, Third Mission, Tutoring, Orientation and Job Placement Area – Technology Transfer Office (UTT), by sending an email to the following address: [email protected]
Regulation, functioning and composition of the Patent, Technology Transfer and Spin-off Commission