University staff can be employed inventors or independent inventors, the LEI sets forth the legal framework conditions here.
The legal framework for university inventions and the resulting rights and responsibilities of university inventors are essentially outlined in the Laq on Employee Inventions (LEI). In principle, this also applies to all members of a university or instituion of higher education, provided they are employed with the same. Students or undergraduates that are employed as research assistants at the university, for example, also routinely fall under this regulation.
The Law on Employee Inventions differentiates between employed (so-called bound inventions) and independent inventions. By definition, employed inventions are created during the period of employment from the employee's incumbent activity or are based largely on the experiences and work of the employer. A university bound invention is to be reported to the university administration.
Other inventions that were created outside of an employment relationship, such as inventions by non-employed students or undergraduates, are independent and need not be reported. Independent thereof, non-employed university members may offer the university to take over their invention from them. If the university is interested, the transfer of invention rights to the university is carried out, as a rule in the context of a separate contractual agreement between the university and the independent inventor. In these contracts, the independent inventor is often equated to a employed inventor in their rights and obligations. This is the case with university inventions, in particular when an invention is based on the intellectual property of an inventor's community consisting of service and independent inventors.
Each university inventor in an employed status is required to report his invention to the university administration.
University inventors who are in an employed status must immediately report their invention to the responsible authority of the university administration. As a rule, the rights or technology transfer department of your university acts as a representative for your employer, however, not
the director or the supervising professor. Feel free to aks us for the relevant contact in your case.
When several individuals are involved in a university invention - an inventor's community in other words - then they should report the invention together as a group. This is recommended whenn independent inventors as well as employed inventors are involved in the invention.
As of October 1, 2009, the report may be submitted in text form (report by email or fax is possible), whereby a written report is still preferred due to reasons of confidentiality and legal security.
Exemptions from reporting requirements
If a sole inventor or inventor's community declines the publication of an invention, based on freedom of teching and research, then the disclosure of an invention must not be submitted. The invention may then, however, not be published elsewhere or used fro commercial purposes, otherwise an invention report must be submitted (LEI § 42, item 2).
Our invention disclosure form
can be found here. The forms for each university are available on their respective websites.
The university will decide on the utilization or release of the university invention.
Since the Law on Employee Inventions for university employees was reformed in 2002, the unrestricted use of each service inention exists for your university, just as in the private sectors. The university inventor's rights are transferred to the employer in such a case. The employer is then obligated to apply for a patent in Germany. As a rule, the employer will also pursue a commercial utilization. The university will utilize TLB services during this process.
A so-called "presumption of utilization" has been in effect since October 1, 2009. Accordingly, the university invention rights will automatically be transfeered to the university after 4 months have elapsed after having received a proper invention declaration. If the university does not request the transfer of rights, they must then release the invention to all inventors in writing this 4-month deadline.
If the university has declared the release of a university invention, then the inventor or the inventor community is entitled to file for protection rights and/ or commercial utilization at their own discretion and at their own cost.
As holder of the rights, the university applies for a patent, the inventors are comensated from the revenue that is collected.
If a university invention is put to use, the university is obliged, as holder of the rights, to immediately apply for an in-country patent at their own costs. In addition, they will usually seek commercial utilization.
The university inventors are to be compensated in the case of earned income, e.g. from al license agreement, from this income. The inventor will personally carry neither costs arising from the application, nor from maintenane and utilization of the respective property rights. The patent application is filed on behalf of the owner of the rights - that will be the university; the inventors will be identified by name as inventors during the patent application process unless they expressly waive this right.
Thirty percent (30%) of all revenues that go to the university from the utilization of the invention are to be entitled as compensation to the sole inventor or the inventor community. A further share of utilization revenue, whose amount can vary according to the university, goes to the university inventor's institute.
TLB - your competent partner in patent and patent utilization management
For more than a decade now, TLB has assisted inventions of universities and institutions of higher education from the initial idea up to the commercial product. We ensure that inventions are successful for all concerned!
Our services for universities and institutions of higher education and their inventors include consultation services conerning invention and patent management, the application and market potential assessment of university inventions, the organization of the entire patenting process including the development of individual patenting and utilization strategies as well as the economic utilization of the patents through sale and licensing worldwide. We negotiate financial terms with enterprises, taking over contract controlling and the resulting claims.
We work closely with the university and the inventors at all levels. Transparency and a common gaol are important to us.
Important for you: TLB will assume the university's patenting costs in the event of a positive assessment. This means a high degree of financial relief for your, university and your institution as well.
Find out more about our transparent and completely cost-effective commissioning model
. Contact your university administration if you would like to use this model.
Read more about our services for universities