Joint Ownership of a Patent: Instructions for Use

Joint Ownership of a Patent: Instructions for Use

It is often said that unity is strength. In the world of innovation, this is almost a rule: collaborations between companies, technological joint ventures, and research projects between universities and private entities are important drivers of progress. However, when a brilliant idea is born from multiple minds or multiple wallets, a far from trivial legal issue arises: joint ownership of a patent.

Managing a jointly owned invention can in fact turn into a minefield and, without clear rules, what was a strategic asset risks becoming an inexhaustible source of disputes.

Indeed, numerous operational issues may arise in the case of a jointly owned patent, including — just to name a few — the choice of a strategy for extending the patent abroad, the management of patent maintenance, or the granting of patent licenses.

In Italy, the cornerstone of the matter lies in Article 6 of the Italian Industrial Property Code, which establishes a fundamental principle of referral: if an industrial property right belongs to more than one party, the related powers are governed by the rules of the Italian Civil Code concerning co-ownership, insofar as they are compatible.

This referral to Articles 1100 and subsequent ones of the Italian Civil Code is not without friction. The nature of a patent, an intangible asset by definition, sometimes fits poorly with rules originally designed for the management of tangible assets (such as agricultural land or buildings).

With regard to the disposition of the patent, according to well-established case law, joint ownership of a patent — unless otherwise agreed — requires the unanimous consent of all co-owners for the granting of an exclusive license or for assignment, since such acts deprive the other co-owners of their right of direct enjoyment. These acts are therefore considered to exceed ordinary administration and require unanimity (Article 1108, paragraph 3, of the Italian Civil Code). It is evident that the potential “cross-veto” resulting from this situation risks paralyzing the commercial exploitation of the patent, turning an opportunity into a cost.

As for the right to implement the invention, a relatively recent and extremely significant reference point for understanding the autonomy of co-owners is the decision of the Italian Supreme Court (Corte di Cassazione) No. 4131 of 18 February 2025. This ruling establishes that, in the case of joint ownership of a patent, even the productive exploitation of the invention by a single co-owner requires the unanimous consent of all the other co-owners.

Specifically, the Court held that a single co-owner may not autonomously initiate the productive exploitation of the patented invention, as this would alter the intended use of the common asset and infringe the exclusive rights of the other co-owners.

The judges clarified that the exclusive right, which is normally exercised against third parties, in the context of joint ownership implies that no co-owner may exclude the others from equal enjoyment. This, in turn, entails joint decision-making on the methods of exploitation. The decision is therefore based on an interpretation of the exclusive right as one that would be lost for the other co-owners if unilateral exploitation by a single co-owner were allowed.

The ruling thus constitutes a brake on the unconditional use of the patent by a single co-owner, imposing a further clear limit on the exploitation of the patent in cases of joint ownership.

Despite these judicial clarifications, “bare” joint ownership — that is, joint ownership not governed by private agreements — presents risks and complications that any company would prefer to avoid, often resulting in disputes and litigation.

Given the regulatory complexity and the orientations of the Italian Supreme Court, the solution does not lie in avoiding collaboration, but rather in regulating it in advance through a Joint Ownership Agreement.

A well-drafted Joint Ownership Agreement should address the following key points:

• Allocation of Shares: Not merely relying on the presumption of equality under Article 1101 of the Italian Civil Code, but defining shares based on the actual contribution (economic or inventive).
• Management of Expenses: Establishing a fund or appointing a lead party responsible for administrative payments, with clear penalties in the event of default.
• Licensing Regime: Providing for the possibility of granting non-exclusive licenses to third parties without prior consent, subject to an agreed allocation of royalties.
• Exit and Buy-Out Clauses: Regulating what happens if a co-owner decides to leave the project, granting the others a right of pre-emption on the leaving party’s share.
• Litigation Management: Defining who assumes strategic leadership in legal actions, preventing procedural disagreements from weakening the patent’s enforcement strength.

In conclusion, collaboration in the patent field represents an important opportunity for growth, but the resulting joint ownership cannot be left to improvisation. Italian law, while providing a basic framework, requires specific contractual integration to adapt to market dynamics. As demonstrated by the Italian Supreme Court’s Decision No. 4131/2025 referred to above, the law intervenes to resolve conflicts, but true efficiency lies in prevention. Careful legal planning is not merely a safeguard, but a true value multiplier for patent owners’ portfolio.

Our firm can provide assistance in negotiating joint ownership agreements and managing complex patent portfolios. We are available to analyze your Clients’ jointly owned patent assets and ensure maximum protection thereof.