Answers around inventions, patents and exploitation

An industrial property right secures the owner a temporary monopoly position for the commercial exploitation and marketing of his invention. Industrial property rights serve as a basis for a spin-off, are a starting point for licensing or purchase negotiations or serve as a motivating element in initiating cooperation with industry.

Research and development results can be secured at an early stage with regard to later exploitation through industrial property rights. However, they also support the success of scientific research proposals, improve research rankings and help in obtaining third-party funding.

The most important industrial property rights are:

•     Patents and utility models for technical inventions
•     copyrights for, inter alia, linguistic works (written works, speeches), computer programs and multimedia results
•     Trademarks for the identification of goods and services, and
•     Registered design (former name: design patent)

An invention is a teaching to solve a technical problem. An invention must

•     be new
•     are based on an inventive step, and
•     be industrially applicable in order to be protected as a patent or utility model.

An invention is considered "new" if it is not part of the state of the art. The "state of the art" comprises all written or oral indications which were available to the public worldwide on the date of filing of the invention at the Patent Office. This also applies to the applicant's or inventor's own publications.

The criterion of "inventive step" (also called "inventive step") is fulfilled if the invention is not obvious to an average person skilled in the art from the prior art. Furthermore, technical processes can only be protected by patent law; apparatus or devices, on the other hand, can exist both as utility models and as patents.

are not inventions and therefore neither patentable nor utility modelable

•     Discoveries, theories and mathematical methods
•     aesthetic creations and designs
•     plans, rules, games, computer programs as such and
•     the reproduction of information

As a partner of your university, we will be happy to advise you as a university inventor on the legal framework

In general: The earlier the better! Before you talk to outsiders, such as colleagues from other institutes or company representatives, about a technical development that may have economic potential, you should find out about the benefits and possibilities of a patent application.

The innovation managers at TLB speak your language! With our sound scientific and technical training and many years of experience in invention and patent management, we can answer your questions quickly and unbureaucratically. During our initial consultation you will find out whether, where and how an invention disclosure should be filed.

After your university has placed an order, the TLB will evaluate the application and market potential of your invention. We carry out the patent and market research necessary for a sound and meaningful evaluation of your invention. Often this information also supports further development at your institute.

In order to answer these questions, two essential points must first be clarified. The first is who your employer is and which tasks are defined in your employment or service contract. Secondly, it is usually clear from the respective grant regulations of the third-party funding provider how to proceed in the case of inventions. It is therefore advisable to submit an invention disclosure to the employer (not to the third-party sponsor) at an early stage in order to clarify the necessary further steps in good time. You can find the form for an invention disclosure here.

The decisive date of a publication under patent law is the date of the announcement in the form of a lecture, poster or the like or the publication date of the journal and not the submission date of your article. Taking into account that it usually takes several months from the date of submission of an article to its publication, it is clear that a patent application need not delay publication. However, in order to prevent information from becoming public during the review process, the patent application should first be filed with the Patent Office and only then should the article in question be submitted to the journal.

Please note that you must notify your university of the publication of an invention, if it has not yet been applied for a patent. After a period which allows the university to file a patent application (usually two months), publication may then take place.

Student research projects as well as bachelor, master, diploma and doctoral theses which are publicly available for inspection are harmful to novelty. The work in question must be kept under lock and key at least until the patent application is filed and any readers of the work must be bound to secrecy. However, the award of a doctoral degree is normally not delayed in agreement with the faculty or the university library.

In Germany, as in most countries, a patent is only granted for inventions which are "new", i.e. which are unpublished both in writing and orally. Publications in the form of lectures, handouts, articles (conference proceedings!), abstracts, papers, trade fair presentations, exhibitions, homepage references, posters, as well as publicly displayed student research projects and bachelor, master, diploma and doctoral theses, for example, are considered to be harmful to novelty.

There is no so-called "grace period" in Germany in which the inventor's publications are not taken into account. Only in the case of utility models are own publications within the last six months not taken into consideration. In the USA, the grace period is one year in case of a patent application. In any case, the chance of extensive patent protection is considerably limited by a prior publication.

It goes without saying that when exploiting a technology, the TLB takes into account all suggestions and contacts that the inventor brings to the table. In general, however, as little information as possible should be given to potential interested parties in companies before applying for a patent or utility model for an invention.

If a company is interested in licensing or purchasing property rights, the TLB will determine the exploitation strategy in consultation with you and your university. The aim is to represent the rights of the university as the holder of the rights and your rights as the inventor in the best possible way. Against this background, it is urgently advised against making any promises to companies that have not been agreed in advance.

Apart from trivial programs, software products are always the result of a creative, scientific intellectual activity and are therefore automatically protected by copyright.

This copyright exists until 70 years after the death of the author. In addition, according to the current examination guidelines of national patent offices, patent protection is also possible for software developments which have a "technical character". This includes computer programs which solve a technical problem or cause an additional technical effect.

Provided that the software is novel and has an inventive step, most patent offices recognise software as patentable which, for example, has one of the following additional technical effects: faster execution times, higher data transfer rates, more effective data storage, higher resolution, for example in image processing, easier manipulation in computer graphics, more effective data compression, higher effectiveness of a data filter.

In recent years, case law relating to inventions implemented in software has increasingly developed in favour of patenting. Due to the constantly changing legal framework alone, individual consultation is recommended. Furthermore, the often short life cycles of a software development must also be taken into account. Many software products only have a life cycle of a few years. Taking into account the patenting costs and the usually long examination periods of the patent offices, it is therefore not always reasonable to seek patent protection for software with "technical character".

Especially in the life sciences, highly interesting and patentable inventions are made. According to the definition, an invention is a "doctrine for planned action using controllable forces of nature to achieve causally manageable success". Accordingly, this can also include inventions in the field of life sciences. For example, if genes or protein sequences are to be patented, their function must be stated. Patent protection can only be obtained for the function. The discovery that a specific, previously unknown gene is present in the genome is a non-patentable discovery. Whether the guidelines laid down by the patent offices are fulfilled must be examined in detail for each invention.