Patent and Co-ownership: A Complicated Relationship
On February 18, 2025, Judgment No. 4131 issued by the First Civil Division of the Court of Cassation was published. The Court returned to the topic of co-owned patents, and particularly the applicability of the rules on co-ownership in such cases. The decision in question raised a legal issue of such significance as to justify a public hearing: in the case of patent co-ownership, may the invention be freely exploited by each co-owner, or, conversely, is the consent of the other always required?
To analyse the matter in more detail, it is appropriate to start with two precedents of the Court of Cassation that dealt with the issue of co-owned patents: Judgment No. 265/1981 and No. 5281/2000. The first decision pertains mainly to procedural aspects. In particular, the 1981 Court classified the license agreement relating to a patent obtained by multiple co-owners as a contract with a complex party and, consequently, ruled that unanimous consent of all co-owners is required for its conclusion and that it constitutes, procedurally, a case of compulsory joinder of parties.
Far more relevant for the purposes of this article is Judgment No. 5281/2000. In that decision, the Court applied the legal principle laid down in Article 1102 of the Civil Code - the prohibition for a co-owner to alter the intended use of the common property or to prevent other co-owners from enjoying it - to affirm the following: “where not authorized by the other co-owners, one cannot unilaterally exploit the invention nor grant third parties a license to exploit the patent, since the latter implies the typical right of the patent owner to prohibit others from using the same inventive idea, which would therefore deprive the co-owners of the right of exclusivity”. If the rules on co-ownership were not applied, and one were to allow a co-owner to individually exploit the patent in such a way as to restrict or exclude the right of exclusivity belonging also to the other co-owners, the co-owned patent would not fulfill its specific and primary function.
In Judgment No. 4131/2025, the Supreme Court made extensive reference to the previous ruling No. 5281/2000, further reaffirming the necessary application of the rules on co-ownership to effectively safeguard the position of the individual co-owners. The Court began with an interpretation of Article 6, paragraph 1, of the Italian Industrial Property Code, identifying a core provision and two corollaries. Specifically, the core is represented by the phrase: “if an industrial property right belongs to several persons, the relevant powers shall be governed [...] by the provisions of the Civil Code relating to co-ownership [...]”. The corollaries, aimed at limiting the application of the provisions on co-ownership, were instead identified in the phrases “insofar as they are compatible” and “unless otherwise agreed.” These limits exemplify the legislator’s awareness of the fact that the rules on co-ownership are generally set out for tangible goods and, consequently, such provisions may apply to intangible rights only “insofar as they are compatible.”
In the specific case, the Court of Cassation, highlighting the absence of specific contractual regulation, ruled on the applicability of the provisions on co-ownership by referring to Article 1102 of the Civil Code. This provision lays down the so-called legal framework for individual enjoyment in relation to collective enjoyment, authorising each co-owner to use the property subject to co-ownership “provided that this does not alter its intended use and does not prevent the other participants from making equal use of it according to their rights”. From this would derive the impossibility for a co-owner to individually exploit the co-owned patent, whether by granting a license of the invention or directly using it in their own business activity, since in doing so they would irreparably impair the right of exclusivity of the other co-owners, as also clearly expressed in Judgment No. 5281/2000.
The Court of Appeal judgment, diverging from the 2000 ruling of the Court of Cassation, had found that the patent, being an intangible asset, could be exploited in the same manner and at the same time by all those who hold ownership, consistently with the legislative wording of Article 1102 of the Civil Code. The exclusivity of one co-owner would not be harmed using the patent made by the other co-owner when the latter does not prevent the former from similar use. However, it is with reference to the concept of alteration of intended use that the Supreme Court quashed the judgment. In fact, as stated in the principle of law, the Supreme Court held that “in the matter of a patent jointly owned by two or more persons, the reference contained in Article 6, paragraph 1, of the Industrial Property Code to the provisions on co-ownership of property rights must be interpreted in the sense that, in the absence of an agreement to the contrary, under Article 1102, paragraph 1, of the Civil Code, a single co-owner is prohibited from exploiting the invention productively on their own account, since this, reflecting on the protection afforded by the patent, alters the intended use of the asset and thus infringes the right of exclusivity of the other co-owner(s)”.
The individual exploitation of the patent by a single co-owner is therefore considered capable of altering its intended use, as it diminishes its intrinsic value and “prejudices the right of the other co-owners to derive from the patent the benefits that the exclusivity granted to them was capable of ensuring”.