PATENTING

According to Article 65 of the Italian Intellectual Property Code – CPI (Legislative Decree N. 30 – Feb. 10, 2005), when industrial inventions are made in the execution or completion of a work relation with a university or public administration, whose objective include research, the researcher is the exclusive owner of all rights deriving from the patentable invention.

The researcher can decide whether or not to transfer these rights to his/her employer.

Patenting in the Inventor’s Name

If the inventor decides to deposit a patent application in his/her name, he must communicate said application to the university within 15 days from the presentation of the application on the form available on the university website:

Annex C – Communication of Patent Application

If the invention is exploited commercially, the inventor must pay the university 40% of all profits deriving from the patent.

Patenting in the University’s Name

If the inventor(s) at Sapienza decide to transfer patent rights for commercial use to the university, but keep moral ownership of the invention, he/she will be able to enjoy the competences and services of the university for the entire duration of the patent.

The university will be responsible for all costs and the inventor will receive (cumulatively, if there is more than one inventor) 70% of the profits or licensing fees for the patent, or the due amount if the patent is transferred to a third party. The remaining 30% will go the university that undertakes to promote research activities and protect and promote the industrial property.

If the rights to the patentable invention are transferred, the inventor(s) must provide the following documents to the university:

• Contract template, completed with specific information, in 2 printed copies signed by the inventor(s): Annex B – Rights Transfer Contract;
• Technical form, completed with specific information, including a description of the invention that can be submitted to the Technical Patents Commission for technical-scientific evaluation: Annex A – Patent Application;
• A technical-scientific report supporting the patent requisites for the invention, drafted by an expert who is not involved in the patent application or a member of the same department as the inventor(s), according to the attached reference table. The referee will also have to complete and sign a Non-disclosure Agreement;
• Annex E – Referee Form;
• Annex F - Non-disclosure Agreement.

All the documentation must be provided to the Patents Office, 10 days before the first meeting of the Technical Patents Commission.