Legal Conditions



Below you will find suggestions regarding the subject of patent registration. Please note that they cannot replace expert advice in particular cases.

 

  1. Commercialisation

    Once a notification is lodged by the inventor, the university together with TLB assesses the invention. If, following research of the relevant patent situation and the potential markets, the commercial potential is assessed as sufficiently promising, the commercialisation is undertaken by TLB in close coordination with the university and the inventor.

    The work undertaken by TLB comprises the establishment of industry contacts, conducting contract negotiations and the drafting of contracts.

    For free inventions, TLB together with the Fraunhofer-Patentstelle, München, offers the possibility of financial support for obtaining industrial property rights. Under this support mechanism, the inventors bear 20% of the cost of applying for and maintaining patent protection. In return for their services and financial assistance, TLB and the Fraunhofer-Patentstelle together share in any income generated by the patent at a total rate of 25% of income.

  2. Software

    Software products are, apart from trivial programs, always the result of a creative, scientific effort and thus are automatically protected by the copyright laws. The copyright protection extends for a period of 70 years beyond the death of the author.

    In addition, under the current guidelines issued by national patent offices, it is possible to seek patent protection for software developments with a technical character. This protection is available for those software programs that solve a technical problem or initiate an additional technical effect.

    Before lodging a patent application, one should however be mindful of the fact that many software products have commercial lives of only a few years. Given the patent costs and the sometime year-long examination process of the patent offices, it is thus not always opportune to seek patent protection for software with technical character.

  3. Inventions by employees

    With the change in the Arbeitnehmererfindungsgesetz in February 2002, the rules applying to inventors at German universities were redefined. All university employees are now subject to the same rules. First, all inventors at universities are under an obligation, in the same way as employees in the private sector, to notify his or her employer (i.e. the university administration) in text form and without undue delay of the invention, irrespective of whether it is in his/her view a service invention or a free invention. For this purpose, forms are available from TLB and legal or technology transfer sections of universities. If several people contributed to the invention, they should lodge a joint notification. Only if the inventor does not wish to make its invention public is there no obligation to notify the university. However, the invention may in this case not be published or otherwise used or commercialised by the inventor.

    The university must decide within four months from the receipt of the notification of invention whether it wishes to:

     

    • Release the invention, thus making it a free invention owned by the inventor; or
    • Claim the invention for the university.



    In doing so, existing contractual obligations are to be considered. If no release is forthcoming from the university within the four months period, then the invention is automatically claimed.

    If the invention is free, or became free, then the inventor is entitled to apply for industrial property rights and/or to deal with the invention in his/her own name.

    If the invention is claimed by the university, (by decision of the university or by default), then the university is obliged to apply for a patent at its own expense and to share any income from its commercialisation (e.g. royalties under a licence agreement) with the inventor.

    The patent application is lodged in the name of the university, and the inventors are named in the application. In the case where a university inventor wishes to publish his/her invention, he/she must inform the university of this intention in a timely fashion. After a delay that allows the university to lodge a patent application (as a general rule two months), the invention may then be published.

    The university inventor receives a share of 30% of all income generated by the university through the commercialisation of the invention. Furthermore, a share of the income, the size of which may vary from university to university, is made available to the institute of the inventor.

  4. Legal position of Inventors

    All members of German higher education institutions, who have an employment or service contract with the university, are subject to the Arbeitnehmer-erfindungsgesetz (loosely translated as the law governing the inventions by employees). Students are only subject to this law if they have an employment or service contract with the university (e.g. part-time research assistant).

    Legally, one distinguishes between “Diensterfindungen” (service inventions) and “free” inventions. Service inventions are those being made during the duration of the employment contract (but not necessarily during work time) and

    • created as part of the activities carried out under the contract; or
    • based substantially on knowledge or work of the employer (here the university).

    All other inventions are free, i.e. the inventor has no obligations towards the university and may exploit the invention independently from the university. The next section explains the requirements applying to those inventions that are not free.

  5. Inventions

    An invention is a new way of solving a technical problem.

    To be capable of protection by a patent or a Gebrauchsmuster, an invention must be:

    • New;
    • Be based on an inventive activity respectively an inventive step; and
    • Commercially applicable.

     


    An invention is considered new when it does not already form part of the current state of the art. The state of the art comprises all written and oral statements, which on the day of the lodging of the application of the invention with the patent office were available publicly somewhere in the world. This also includes any publications by the applicant himself.

    The criterion of innovative activity is met if, for a person skilled in the relevant field, the invention does not flow in an obvious manner from the known state of the technology.

    The main difference between a patent and a Gebrauchsmuster (apart from the fact that the latter can be obtained within six months of publication by the applicant, while any publication prior to the application makes obtaining a patent impossible) is a reduced degree of inventiveness or inventive step needed for the Gebrauchsmuster.

    The following are not inventions and thus cannot be protected by patents or Gebrauchsmuster:

    Discoveries, theories and mathematical methods;

    • Aesthetic forms and designs;
    • Plans, rules, games, and computer programs as such; and
    • Reproduction of information.

  6. Industrial Property Rights

    Industrial property rights provide the owner with a monopoly position for a limited period to exploit his/her invention or development. The outcomes of research and development projects can be protected by applying for the appropriate rights. Industrial property rights are often the initiator for licence negotiations or serve as a motivating element when seeking to establish cooperation with industry.

     

    The most important industrial property rights are:

    • Patents and Gebrauchsmuster (a type of small patent available under German patent law);
    • Copyright of, among others, language based works (books, speeches), computer software, as well as multimedia works;
    • Trade marks identifying products or services; and
    • Design, providing protection for original creations, such as a novel shape of a chair.