Co-ownership of patents in Italy: The unresolved tension between individual exploitation and collective control

1. Introduction: a Sensitive and Unresolved issue

Co-ownership of industrial property rights – and of patents in particular – is one of the most complex and debated topics in intellectual property law. The issue arises frequently in practice: think of inventions jointly developed under R&D collaboration agreements or joint ventures, or of patents granted to multiple co-inventors who later seek to act independently.

The legislative framework is, however, fragmentary. Article 6(1) of the Italian Industrial Property Code (Legislative Decree No. 30/2005) provides, as a general rule applicable to all industrial property rights, that “where an industrial property right belongs to more than one person, the relevant entitlements are governed, unless otherwise agreed, by the provisions of the Civil Code relating to co-ownership (comunione), insofar as compatible.”

The provision, on closer analysis, while on the one hand shows the Italian legislator’s intention to provide a stable framework for patent co-ownership, on the other hand has two limiting corollaries: first, Civil Code provisions on co-ownership are designed for tangible assets, making their application to the intangible nature of industrial property rights advisable only “insofar as compatible”; and second, parties’ contractual autonomy must be preserved, so the co-ownership rules apply only “unless otherwise agreed.”.

This framework has generated considerable interpretive uncertainty. With its judgment No. 4131 of 18 February 2025, the Italian Supreme Court (Corte di Cassazione) has recently taken a definitive step – though not without leaving some questions open.

2. The Supreme Court’s Ruling

The legal issue before the Supreme Court was whether, in cases of patent co-ownership, each co-owner is free to exploit the invention independently, or whether the consent of all other co-owners is invariably required.

The Supreme Court held that, in cases of joint patent ownership, no co-owner may unilaterally exploit the patent without the consent of the others, and that this prohibition extends to commercial exploitation.

In reaching its decision, the Supreme Court relied on Article 1102 of the Civil Code, which permits individual use of jointly owned property only insofar as such use does not alter its intended purpose and does not prevent the other co-owners from making equivalent use of it in proportion to their respective shares.

In the Supreme Court’s view, the individual exploitation of a co-owned patent by a single co-owner does indeed alter the intended purpose of the patent, as it diminishes its value with respect to the value the patent would have retained had it been exploited collectively. Accordingly, such exploitation cannot be justified under Article 1102 of the Civil Code.

This decision is particularly significant because, although the Supreme Court had previously touched upon the subject – addressing the procedural aspects of co-ownership in the intellectual property field in judgment No. 265/1981, and affirming the prohibition of unilateral exploitation of an intellectual property right in judgment No. 5281/2000 without however analyzing the question deeply – neither decision had provided a comprehensive treatment of the matter.

Here, by contrast, the Supreme Court establishes the legal principle that a patent must be assessed in light of its inherent “market orientation”, having regard to its nature as an economic asset and the exchange value that the market consistently ascribes to it. In the Court’s view, patent protection does not merely confer upon the proprietor a ius excludendi alios but also includes the owner’s power to determine the methods and forms of exploitation in response to evolving market conditions. For this reason, the unrestricted exploitation of a patent by an individual co-owner – even if confined to productive use – would ultimately erode the value of the patent itself, since the individual co-owner would be free to determine, at their sole discretion, the manner and form in which the invention is exploited. The Court accordingly holds that exploitation uti singulus alters the intended purpose of the patent, in breach of Article 1102 of the Civil Code. The protection that the patent is capable of affording when exploitation is conferred upon and exercised by the co-owners collectively ceases to exist once collective exploitation gives way to individual exploitation, thereby diminishing the intrinsic value of the patent and prejudicing the right of the remaining co-owners to derive the benefits of exclusivity.

3. Critical observations and open questions

The judgment represents the most complete decision held by the Italian Supreme Court on patent co-ownership for now. However, it leaves – and in some respects aggravates – several practical questions.

First, it remains to be clarified whether the prohibition of unilateral exploitation is limited to “productive use” or extends to other forms of commercial exploitation, such as the grant of non-exclusive licences to third parties, or whether those may require a different analysis.

Academic commentary has already observed that the Court appears to have adopted a perspective focused narrowly on protecting each co-owner’s right to control the exploitation of the patent on the market, while overlooking the fact that the inability to exploit the invention equally diminishes the economic value of the patent.

A more balanced approach might draw inspiration from the solutions adopted in other legal systems – including France and the United Kingdom – which allow each co-owner to exploit the patent for productive purposes and to grant non-exclusive licences, while affording co-owners who do not exploit the right the possibility of receiving financial compensation. Such a model would more effectively reconcile the interests of all co-owners.

A positive aspect of the decision is instead its confirmation that the default regime under the Civil Code is fully derogable by agreement between the parties. This makes it even more important – and urgent – for parties who intend to develop an invention jointly, or to become co-owners of a patent, to put in place comprehensive co-ownership agreements governing exploitation rights, revenue sharing, decision-making mechanisms and remedies for breach.

4. Conclusion

In conclusion, judgment No. 4131 of 18 February 2025 is the most thorough ruling the Italian Supreme Court has yet issued on patent co-ownership. By establishing that, absent a contrary agreement, a single co-owner is precluded from productively exploiting the invention unilaterally — on the basis that doing so alters the patent’s intended purpose and infringes the exclusivity rights of the other co-owners — the Court resolves, for the first time in clear terms, the question of individual productive exploitation.

However, as currently drafted, the decision risks creating an impasse in co-ownership relationships where no agreement exists.

Pending legislative intervention to provide a definitive regulatory framework – as other European jurisdictions have already done – the 2025 judgment serves both as a milestone and as a call to action: for the legislator, to fill a regulatory gap that is becoming increasingly unsustainable; and for lawyers, to advise clients entering into co-ownership arrangements to negotiate detailed agreements that leave as little as possible to the default rules.