Italian Supreme Court clarifies co-owners’ right to exploit patents

With judgment No. 4131 of February 18 2025, the Italian Supreme Court of Cassation (the Supreme Court) returned – for the third time in about 50 years – to the issue of the powers of individual co-owners of patents. It assessed whether it is permissible to make direct use of a jointly owned patent, regardless of the consent of other co-owners.

The only direct Supreme Court precedent that exists on this topic is judgment No. 5281 of 2000, which involved an infringement claim filed by a patent owner. In that case, a third party – the defendant’s legal representative – intervened, claiming that he had originally been a joint owner of the patent and had, in that capacity, assigned his share to the plaintiff’s predecessor.

The court upheld both the lower-instance decisions in ruling that since a joint owner, pursuant to Article 1102 of the Italian Civil Code (ICC), cannot alter the use of a jointly owned invention or prevent others from enjoying it according to their rights, they cannot grant a licence to exploit, or unilaterally exploit, the invention when not authorised by other joint owners.

According to the court, the use of a patent should be looked at from the perspective of a jointly owned asset, which remains subject to the rules of joint ownership set by Article 6 of the Italian Industrial Property Code (IIPC), including in relation to its exclusive use and exploitation.

The Supreme Court had also dealt with this issue 20 years earlier – albeit specifically focusing on the power of a co-owner to grant a licence in favour of a third party – in decision No. 265 of 1981.

In that case, the court clarified that a licensing contract requires the unanimous consent of the patent co-owners in some scenarios. This conclusion was binding in the case of an agreement involving a duration of more than nine years and in the case of an exclusive licence, since this would deprive the aforementioned joint owners of the ability to directly use the jointly owned asset, to which they are entitled under the first paragraph of Article 1108 of the ICC.

This precedent differs from last February’s decision as it had a different focus. In the above-mentioned decision, the court focused on the power to grant a licence to use, and in these terms the limits set forth in articles 1102–1108 of the ICC were interpreted.

More comparable to the most recent case are the facts that led to the 2000 judgment, wherein the issue of direct use by a co-owner had been dealt with, but only in an obiter dictum.

The February 2025 ruling is of critical importance, as it addresses the issue of direct use and exploitation by a co-owner, providing a binding interpretation of the terms set under Article 6(1) of the IIPC on joint ownership.

The centrality of the ruling is confirmed by the fact that the case was referred to a public hearing, because of the relevance of the question of law at stake.

From the outset, the court returned to the question of an absolute, rather than relative, notion of exclusivity of the right of co-patentees.

In the first two instances – particularly in the ruling rendered by the Court of Appeal of Venice – the judges opted for a relative notion, arguing that exclusivity may be claimed against all subjects, except the other joint owners of the patent.

As such, a unilateral act of exploitation by the co-owner would not affect the relative exclusivity of the others, as interpreted above, and would be permissible.

In the case ruled on by the Italian Supreme Court last February, a Slovenian firm filed an action against the Italian company Mares S.p.A., a well-known manufacturer of diving and fishing goods, to have its right of co-ownership ascertained by the court on a patent related to a spearfishing rifle.

The Supreme Court established the principle of law that, in contrast with lower courts, pointed at an absolute exclusivity of patent co-holders; according to which, acts of exploitation or direct use by a single co-owner require the consent of others, as individual use would impair the economic value of the patent and, as a result, alter the patent purpose and the scope of exclusivity granted to each and every co-patentee.

There are several key takeaways from the Supreme Court’s ruling, which, to a large extent, applies the principles expressed 25 years earlier but to a different scenario.

The first is that whenever two or more people or entities are designated co-owners of a patent (the same may be said for trademark co-owners, since the 1981 precedent involved other types of intangible rights), the co-patentees must be aware that, in the absence of any agreements to the contrary, the rules of the ICC and IIPC, as interpreted by the courts, will imply substantial restrictions on an individual’s power of use and exploitation. This must also be well understood by any person/entity who decides to purchase a co-ownership interest or share in a patent, since they/it will ‘inherit’ the legal position of the predecessor, with all its limitations.

The second is that, in order to avoid these substantial limitations, it is incumbent upon the parties to enter into detailed agreements, which may well derogate the IIPC and ICC general rules and govern the various powers and rights of individual co-owners.