We support inventors in all questions concerning the exploitation of their innovation. Our innovation specialists know all the steps from the evaluation of an invention to its successful market launch.
Members of universities can be service inventors or free inventors, the legal framework is provided by the ArbEG, the law on employee inventions.
In principle, this law applies to all members of a university or college of higher education, provided they are in an employment relationship with the university or college. This means that students or graduates who are, for example, employed as research assistants at the university or college are also covered by this regulatory area. The German Employee Inventions Act distinguishes between service inventions (so-called bound inventions) and free inventions. Service inventions are those which, during the period of employment, have either arisen from the employee's duties or which are largely based on the experience or work of the employer concerned. A bound university invention must be reported to the university administration if it is to be made public, e.g. if it is presented or described in a lecture, a poster or a journal. Other inventions which have been made outside of an employment relationship, e.g. inventions of a non-employed student or graduate, are considered free inventions and therefore do not have to be reported. Irrespective of this, however, non-employed university members are at liberty to offer their invention to the university for adoption. If the university is interested in doing so, the rights to the invention can be transferred to the university within the framework of a separate contractual agreement between the university and the independent inventor. In such contracts, the freelance inventor is often placed on a par with a service inventor in terms of his or her rights and duties. This constellation is often found with university inventions when an invention is based on the intellectual property of an inventor community consisting of service inventors and independent inventors.
Every university inventor in an employed status is required to report his invention to the university administration.
University inventors who are in an employment relationship must report their invention immediately to the responsible office of the university administration. As a rule, the legal or technology transfer department, in some cases also the budget department of the university, acts as the responsible office, but not the head of the institute or the supervising professor. In case of doubt, the responsible contact person can also be inquired at the TLB. If several persons are involved in a university invention - i.e. if there is a community of inventors - the notification should be submitted jointly by all co-inventors. This is also recommended if, in addition to service inventors, independent inventors are also involved in the invention. Although the text form (e-mail or fax) is legally sufficient for reporting the invention, a written report is still preferable for reasons of confidentiality and legal certainty.
The exception to the obligation to report is the so-called negative freedom of publication. If a sole inventor or a community of inventors refuses to publish the invention on the basis of their freedom of teaching and research, no invention disclosure must be submitted. The background to this is that only an unpublished invention can be protected by patent and that the university should be given this opportunity. The TLB form for invention disclosures can be found here. The respective university's own forms are available on the website of the university concerned.
The university will decide on the utilization or release of the university invention.
Since the reform of the employee invention law, every university has had the possibility, as with employee inventions in the free economy, to claim every service invention regardless of the position of the employee. Through such a claim, the rights to the invention are transferred from the university inventors to the employer, the university. Since 2009, the so-called fiction of claiming has been in force. According to this, the rights to a university invention are automatically transferred to the university after 4 months after receipt of a proper notification. The university then has the obligation to file a patent application for the invention in Germany.
As a rule, the university will also endeavour to commercially exploit or use the invention within the scope of research projects. In such processes for the protection and exploitation of inventions under intellectual property law, the university can call upon the services of the TLB. If, however, the university does not wish a transfer of rights to the invention, it must release the invention to all inventors within this 4-month period (at least in text form). If the university has declared the release of a university invention, the inventor or the community of inventors shall be entitled to apply for an industrial property right and/or commercially exploit the invention at their own discretion and at their own expense.
The university as the holder of the rights applies for a patent for the university invention, the inventors are remunerated from exploitation revenues.
If the university claims the service invention, it must immediately apply for a patent for it in Germany at its own expense. The inventor personally does not incur any costs for the application, nor for the maintenance or exploitation of the property right. The patent application is filed in the name of the holder of the rights, i.e. the university. The inventors are named as the inventors in the patent application unless they expressly waive this right. In addition, the university will generally endeavour to exploit the patent commercially. The university inventors will be remunerated from this in case of relevant income, e.g. from a license agreement.
The university inventor(s) is/are entitled to 30% of all income the university receives from the exploitation of the invention as legally stipulated compensation. In some cases, a further share of the exploitation income, the amount of which may vary from university to university, goes to the university inventor's institute.
TLB - your competent partner in patent and patent utilization management
In order for an invention to find its way to the market, it must be protected by patent. Unfortunately, the path from the patent application to a granted patent is often long. The responsible patent office examines the novelty of the invention and the so-called inventive step very carefully. Experienced patent attorneys are commissioned with the patent application via TLB. The detailed knowledge of the inventors is not to be underestimated for the preparation of the patent application. TLB acts as an intermediary between the university, inventor and patent attorney. Good communication between the parties involved can greatly simplify and accelerate the process. Parallel to the patent procedure, the TLB is looking for possible exploitation partners. As a rule, these are companies that appear suitable for transforming the invention into a marketable product. If a company has a serious interest in the invention, the TLB negotiates on behalf of the university about the conditions for using the invention. The university then concludes the actual contract with the company concerned.
Ideally, the success of the company with the invention is directly reflected in the inventor. In addition to the aforementioned remuneration, the inventor also receives increased attention in science and research.