The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
License of Right: A Fruitful Way to Exploit Patents and Save Annual Fee Costs
Italy, among several other countries, provides for the possibility of a License of Right in respect of patent applications or granted patents.
Provided that no exclusive license has been recorded with the Italian Patent and Trademark Office, a licence for non-exclusive use of that invention can be offered to the public either upon filing of the patent application or during pendency of the application or after grant of the patent.
The offer declaration is filed once – i.e. it does not need to be periodically renewed – and is valid until revoked.
Once the offer has been recorded by the Italian Patent and Trademark Office, the applicant/patentee is entitled to benefit from a 50% reduction in annual fees for maintenance of the application/patent.
The offer of license of right for a patent is recorded in the on-line Italian Patent Register and published in a dedicated Bulletin. After that, any interested person can obtain a licence on the patent and the effects of the license shall start from the notification to the applicant/patentee of acceptance of the offer, even if the remuneration is not accepted.
If licensor and licensee do not agree on the remuneration, an Arbitration Board or, in certain cases, the Court shall determine the amount thereof and the relevant methods of payment. If new circumstances arise or are disclosed that make the determined remuneration clearly inadequate, the remuneration can be modified in the same manner as adopted for the determination of the original amount.
Applicants and patentees should be made sensitive to the advantages of offering a licence of right, which lie not only in the already mentioned reduction in annual maintenance fees, but also in the opportunity for a better exploitation of their inventions by widening the range of potential licensees they may not have thought of before.
For additional information about licence of right in Italy, please feel free to get in touch with our patent attorneys.