1. I have developed an invention, what do I have to do now?
Pursuant to the German Employee Invention Act (Arbeitnehmererfindungsgesetz), all employees are required to report their invention to the employer, i.e. the university. For advice and assistance concerning the “invention disclosure report”, please contact our Patent Officer, Dr. Olaf Klatt, prior to working on the report form. In a one-on-one meeting, you can describe and explain your invention and ask general questions about the process. In any case, do not publish or publicly disclose your invention before the invention has been registered for a patent or officially released by the university.
2. What is an invention disclosure report, and where can I get the form?
The invention disclosure report formally informs the university about the invention you have created. On the form, you will need to describe your invention in detail: the technical problem, the solution it offers, and the advantages in comparison to the prior art / current the state of the art. You should also describe the context in which the invention was developed (e.g. during an externally funded project). In particular, please ensure that all of the inventors are listed (including external inventors). The form can be found here.
3. Who do I send the invention disclosure report to?
The fully completed invention disclosure report, signed by all of the inventors, should be sent in a sealed envelope to the President of Paderborn University or submitted personally. In exceptional cases, if this is not possible, please discuss an alternative submission method with the patent officer.
4. What happens after I submit the invention disclosure report?
Receipt of the invention disclosure report is confirmed to the inventor(s) in writing, and then the invention is formally reviewed for completeness and third-party rights. Next, the invention disclosure report is forwarded to PROvendis GmbH for an evaluation of the patentability, usability and commercialisation potential of the invention. Upon receipt of the expert opinion from PROvendis, the university will decide whether to claim or release the rights to the invention. The decision will be sent to the inventor(s) in writing. In the event of a claim by the university, a patent application is filed.
5. What do “claim” and “release” mean, and who decides on them?
If the university claims rights to the invention, the employer utilises the employee’s service invention. The employee must be informed about the claim in a written notification. Upon receipt of this notification, all rights to the service invention are transferred to the employer. A claim requires the employer to apply for a patent for the service invention immediately, at least a national patent in Germany, at his/her own expense and in his/her name.
If the employer releases the rights to the invention, the employee is free to decide whether to apply for a patent at his/her own expense and in his/her own name or to disclose his/her research results to the public
The decision is made by the Vice-President for Operations at Paderborn University.
6. Who evaluates my invention?
In general, all university inventions are sent to the PROvendis GmbH patent commercialisation agency for evaluation; PROvendis then sends an expert opinion to the university with the results of its evaluation. At Paderborn University, the Research Advising Unit also sends an additional recommendation in this regard to the Vice-President for Operations.
7. What is the procedure at my university – from invention disclosure report to patent application?
The first point of contact for reporting an invention is the Research Advising unit. The invention disclosure report must be made in writing using this form.
Following a preliminary review by the Research Advising Unit, the invention is evaluated by PROvendis GmbH. Upon receiving the expert opinion from PROvendis, the university decides whether to claim or release its rights to the invention. If the university claims its rights, it immediately starts the patent application process. The entire process is conducted in close cooperation with the inventor(s), the university, PROvendis GmbH and the patent attorney.
8. Who is PROvendis and what do they do?
The PROvendis GmbH patent commercialisation agency is a subsidiary of the universities of North Rhine-Westphalia. The “innovation managers” at PROvendis are scientists and engineers responsible for evaluating the patentability and commercial exploitation potential of university inventions. They assist with the patenting process, search for commercialisation partners, and conduct contractual negotiations with companies. In addition, PROvendis also employs attorneys specialised in intellectual property rights and patent law who advise the universities on all legal intellectual property rights and patent matters.
9. What criteria is used to evaluate the invention?
The PROvendis GmbH patent commercialisation agency evaluates an invention according to the following criteria: patentability (novelty, innovativeness, level of inventiveness, commercial usability), viability or degree of development, and commercial exploitation potential.
10. How long does the patent application process take?
Once the university receives the fully completed invention disclosure report, the evaluation process can take from 3 to 6 months to evaluate the invention, prepare the patent specification, apply for the patent and receive confirmation of receipt from the patent office. However, the process may be faster and largely depends on the circumstances and the availability of already existing data. The process can be substantially expedited if you compile experimental data and illustrations in advance, conduct preliminary research on the prior art and current state-of-the-art, and provide information about companies that could be potentially interested in the invention.
11. What deadlines apply to inventors? Is it advisable or required for an inventor to act quickly?
University employees are required to immediately report their inventions to the university (Section 5 German Employee Invention Act (ArbEG)). Furthermore, the inventor is not permitted to publish or publicly disclose his/her invention for two months after submitting the invention disclosure report to the university. Therefore, if a publication is planned, you should take this non-disclosure period into account. The sooner you report your invention, the sooner it can be patented and your invention protected.
12. One or more of the co-inventors is a student – do special rules apply?
Students are not employees of the university and thus are not subject to the provisions of the German Employee Invention Act (Arbeitnehmererfindergesetz). However, the university and student co-inventors can conclude an agreement in which the students agree to transfer their share of the invention to the university and receive remuneration as stipulated by the German Employee Invention Act.
13. Can a visiting researcher/scholar be considered an “employed inventor” at the University?
In general, yes, but only if he or she has a contractual relationship with the university. If an employment contract does not exist between the visiting researcher/scholar and the host university, the visiting researcher/scholar is considered to be an independent inventor.
14. I’d like to publish something as soon as possible. When am I allowed to?
Pursuant to the German Employee Invention Act (Arbeitnehmererfindungsgesetz), you may not publish or publicly disclose your invention for two months following submission of the invention disclosure report. If the contents of your publication should/must be protected by a patent, they must be protected in advance of the publication. Your invention is not patent-protected until the patent office receives the patent application. Prior to that, you must refrain from publicly disclosing the contents of the publication, because if you do, your invention will no longer be considered new and therefore will no longer be eligible for patent protection.
15. What should I be aware of to make sure I don’t jeopardise the chances of getting my invention patented?
Inventions must not be disclosed to the public in any way prior to the date on which the patent application is filed and received. Any persons who had knowledge of the invention in advance must be bound to confidentiality.
16. What are the advantages of having the university file the patent for my invention, and what financial share in the revenues generated from the commercial exploitation of inventions are inventors at universities entitled to?
In general, a university employee is required by law to report the invention to the university prior to disclosing it. If the university decides to claim rights to the invention, it will apply for a patent for the invention at its own expense and will exploit the invention to the best of its ability. University inventors thus do not incur any costs and receive 30% of the gross profits generated by the invention.
17. Will I receive compensation, and in what amount?
If your service invention is successfully commercialised, the university is legally required to pay a remuneration to you as the inventor. Pursuant to Section 42 (4) of the German Employee Invention Act (Arbeitnehmererfindungsgesetz), the inventor or group of inventors is entitled to 30% of the gross revenues generated from the commercial exploitation of the invention (from licensing or sales), i.e. before deduction of the patent fees. In the private sector, in comparison, inventors usually receive much less financial compensation – between 1 and 3% of the gross revenues.
The inventor’s remuneration is regarded as part of his/her taxable salary and in all cases is paid by the Landesamt für Besoldung und Versorgung (State Office for Salaries and Pensions).
18. Does the inventor have to pay for expenses arising from the patent application or commercialisation measures?
If you report an invention to us and we claim rights to it, the university assumes full responsibility for all costs incurred in connection with patent application fees and the subsequent commercialisation. As the inventor, you do not incur any costs at all.
19. My invention was developed during an externally funded project. What do I need to be aware of in this case?
Even if your invention was developed during an externally funded project, you are still required to submit an invention disclosure report to the university. In this case, however, please submit the cooperation agreement signed by you and the project partner and/or provide information about the project during which the invention was created (project partner, funding reference no., funding provider). The university will then review all relevant contractual agreements and proceed accordingly.