FAQ

This is only in rare cases a problem. However, it is important to submit your invention as early as possible.

We recommend to get in touch with us, when your research results are available and when you expect them to constitute an invention or if you want to clarify, if your results have an economical potential and if this should be protected.

The best time to get in touch with us is, when the first draft of your planned publication is finished. This draft can then be attached to your invention declaration to supplement the description of your invention. Between this point in time and the publication of your paper there usually is enough time to evaluate the invention and to professionally draft and file a patent application. This however, has definitively to be done before your paper as well as preliminary online abstracts are published.

Nevertheless, sometimes inventions are only submitted shortly before their imminent publication. In these cases journals are often willing to delay the publication in order to file a patent application. Alternatively and if the invention obviously has a high economic potential, the filing of a provisional (not fully legally drafted) patent application based on your publication draft could be an option to achieve patent protection.

Inventions are free.

• if they are not developed within the scope of an employment
• if they are not based on experiences, which are the basis of or shared with an employment.

The employee must report also a free invention (“freie Erfindung”) to his employer immediately in a separate written notice in text form. The employee has to describe he invention and, if necessary, he has to report enough about the origin so that the employer can decide if the invention is indeed free.

Furthermore, service inventions (“Diensterfindung”) are free if the employer does not claim the service invention. When a service invention becomes free the employee can use it without restrictions.

In German universities inventions were free if the inventor had a special privilege called “Hochschullehrerprivileg”, which usually existed if he was a professor. However the old Employee Invention Law (“Arbeitnehmererfindergesetz”) was revised. Since 2nd July 2002 professors are no longer privileged in this way. Each invention made after 2nd July 2002 must be reported to the employer immediately in a separate written notice in text form, also by professors

In German universities inventions were free if the inventor had a special privilege called “Hochschullehrerprivileg”, which usually existed if he was a professor. However the old Employee Invention Law (“Arbeitnehmererfindergesetz”) was revised. Since 2nd July 2002 professors are no longer privileged in this way. Each invention made after 2nd July 2002 must be reported to the employer immediately in a separate written notice in text form, also by professors.

Like other inventors professors are free inventors,

• if they are not developed within the scope of an employment
• if they are not based on experiences, which are the basis of or shared with an employment.

The employee must report a free invention (“freie Erfindung”) to his employer immediately in a separate written notice in text form. The employee has to describe he invention and, if necessary, he has to report so much about the origin so that the employer can decide if the invention is free.

Furthermore, service inventions (“Diensterfindung”) are free if the employer does not claim the service invention. When a service invention becomes free the employee can use it without restrictions.

The contact persons for invention disclosure forms („Erfindungsmeldungen“) are the patent managers of MBM ScienceBridge GmbH.

Please send your filled out invention disclosure form, preferably after prior consultation with the MBM Science Bridge GmbH, to your university/research institution. Inventors of the Georg-August-University should send their invention disclosure form directly to MBM Science Bridge GmbH. For details, please refer to the terms in the invention disclosure forms of your university/research institutions. After MBM ScienceBridge GmbH receives your invention disclosure, we check if it is complete. We then evaluate areas of application and possibilities of commercial exploitation for the invention. After assessing market potentials we also evaluate if the invention is really new and inventive and how likely it will result in a granted patent. Based on these results the university/research institution will decide if it claims the invention.

After claiming the invention a patent attorney will be instructed with the preparation of the patent application. For this your help is required, since you contribute the technical and scientific know-how. We will discuss the draft of the patent application with you, so that all scientific, commercial and legal aspects are covered in the final patent text. The patent attorney will then submit the patent application to the relevant patent office and will also monitor deadlines for an expansion of the patent to other countries.

In parallel, we work together with you in order to create material that can be used to contact companies. After conclusion of non disclosure agreements we will present more detailed information to interested companies and potentially facilitate a license agreement.

If your university/research institution is not interested in a patent application it will release the invention. In this case you are free to apply for a patent for this free invention at your own expense.

• Have you ever written down your idea or invention? If yes, please bring this description (1-2 pages) and any existing drawings, as well as any test results or data supporting your invention.
  If not, try to write it down. It helps you to explain your idea. Please remember that you are the expert of your invention and that you are the only one who is able to describe it in its full extent.
• Have you ever published your idea or a talked about it? If yes, please show us these documents.
• Think about how (technically) mature your idea or invention is. Which development steps need still to be done? Do you need outside help for completion?
• Have you developed the idea or invention together with other people? Who is involved and what is their inventive share? Is your department head informed?
• Have you developed the idea or invention within a project sponsored by third-parties? If yes, please provide us with a copy of relevant contractual agreements.
• Have you ever talked about your idea or invention to a company or any other study group? How sure are you, that other people did not pick up your idea? If relevant, please provide us with copies of closed non-disclosure/confidentiality agreements.
• Which companies might be interested in your invention? Do you already have any contacts which we can use?

This is up to the inventor. However, it is often helpful to discuss the situation and the following process first.

Are you an inventor from an universities/research institutions that has joined the SIGNO Hochschule group in Lower Saxony? In this case, you can get the invention disclosure form directly from your university/research institution. Or have a look right here on our website in the download area. There you will find an appropriate invention disclosure form for each university/research institution that we work for.

Experience has shown that from the first meeting discussing an invention or regarding the invention disclosure form, to preparation of the patent application and affirmation of the receipt of the patent application by the patent office usually 1.5 to 3 months have elapsed. This depends very much on particular circumstances and on the quality of already existing material

Existing descriptions (state-of-the-art of technology, questions/problems, invention, experimental data, material & methods and images/drawings), thoughts about possible patent claims, own literature and patent searches and knowledge of potentially interested companies accelerate the process.for.

Der Erfinder hat seinem Dienstherrn die Erfindung unverzüglich zu melden (§ 5 ArbEG).
Steht eine Veröffentlichung an, so hat der Erfinder die Erfindung spätestens 2 Monate vorher zu melden, damit dieser über die Inanspruchnahme oder Freigabe entscheiden kann.

Ansonsten hat der Arbeitgeber 4 Monate Zeit, über eine Inanspruchnahme zu entscheiden.
Entscheidend für den Erfinder ist: Je früher er meldet, desto eher kann ein Schutzrecht angemeldet werden, welches seine Rechte sichert. Denn etwaige Vorveröffentlichungen sind patentschädlich.

No! Prior to any publication in journals or on posters or abstracts at conferences it is very important that the inventor reports the inventions sufficiently ahead of time so that a patent application is still possible. Otherwise, the published invention is state-of-the-art technology and cannot be patented anymore! Therefore, the Employee Invention Act (“Arbeitnehmererfinderrecht”) requires that in such cases the invention must be reported within the legally required time frames.

If the thesis is published, the same answer as to publications applies: A publication is a disclosure and the invention is with its disclosure state-of-the-art technology. The prior publication of an invention destroys its novelty and prevents a patent application!

Therefore, you should wait with printing your work including assigning of an ISBN number and delivery to libraries until a patent applications has been filed.

This should be avoided!

Confidential information, i.e. the core of an invention should only be revealed after signing a confidential disclosure agreement (CDA) by all parties. Preferable is a disclosure of confidential information under a CDA only after filling a patent application!

However, it is very useful if the inventors can identify potential cooperation partners and get their interest in the invention just by giving them general information. Before any such conversation you should carefully evaluate, which results you can communicate without disclosing the core of your invention.

The patent costs in the first 3-5 years including the costs for a patent attorney are approximately (in €):

German utility patent 3.000 - 4.000

German patent 4.000 - 5.000

European patent 12.000 - 15.000

PCT-US-Patent 10.000 - 12.000*

All major countries ca. 50.000

* need a patent attorney

If your employer claimed your service invention he will carry the costs for patenting your invention.

If your employer has made use of your invention, he must file a patent application based on your invention declaration.

MBM ScienceBridge GmbH will coordinate this process on behalf of the higher education institutions and research facilities to which it attends.
First of all, a patent lawyer specialised in the respective field will be contracted to prepare the printed patent specification. Your assistance in the preparation of the printed patent specification will be required because you contribute the scientific know-how. The patent lawyer will usually draw up a draft patent on the basis of the information provided by you in your invention report and then discuss the draft patent with you and the responsible Patent Manager of MBM ScienceBridge GmbH. In this way, the description of the invention and its applications, the considerations concerning its commercialisation and patent law aspects will be included in the final printed patent specification.
The patent lawyer will then file it as a patent application. He will also monitor any time limits for an extension of the patent to cover various countries.

MBM ScienceBridge GmbH will remain the primary contact partner for you - the inventor – in this process. Our aim is to take the majority of the bureaucratic burden of such a process off your shoulders.

Inventors from universities receive 30% of the gross revenues (before deduction of any costs!) that the university earns with their invention.
This means for you: If your employer successfully commercializes your invention you will definitely benefit. Even if costs are incurred in connection with the commercial exploitation: You will receive your share of the gross revenues!

Yes! Inventors from universities will receive a 30% share of the gross revenues if his employer claims and commercializes the service invention - no matter if he leaves the university or goes into retirement.

Patent Application
In Germany, patent applications are filed with the German Patent and Trademark Office (DPMA). It is highly recommended that you work with a patent attorney to ensure that the formal requirements for a patent application are met. Here you will find the DPMA application form and a guide to filing a patent application. The patent attorneys are commissioned and authorized by MBM ScienceBridge GmbH. There are no costs to you as the inventor.

Examination for obvious grounds for refusal
The DPMA examines the application for compliance with formal requirements and for the presence of obvious grounds for refusal. A description of the grounds for refusal can be found in the “Information Sheet for Patent Applicants” under Section VII: “What Happens After Filing?” (page 10)

Request for Examination of the Patent
This request must be filed within 7 years of the patent application and results in an examination of substantive patentability. A patent can only be granted after a positive examination.

Publication
Publication takes place 18 months after the patent application is filed, regardless of the status of the proceedings, through the release of the application documents as a so-called “publication.” This makes the invention available for anyone to view.

Granting of the Patent
A patent is granted only after the substantive examination has been successfully completed. The legal effects of the patent take effect upon publication of the grant in the Patent Gazette.

Opposition Phase
The three-month opposition period begins with the publication of the patent grant, during which anyone may file an opposition against the grant. An opposition leads to a re-examination of the lawful grant.

Patent Maintenance
Starting in the third year of the patent, an annual fee is due to maintain the patent. In general, a patent claim can be maintained for 20 years; in special cases (medicines), for 25 years.

Further link:
German Patent and Trademark Office (www.dpma.de)

Procedure for the grant of an international patent:

• often a local patent application (e.g. a German patent application) is the basis for a follow-on PCT application
• filing of an international patent application (e.g. at DPMA)
• transfer of the international patent application to the "International Searching Authority (ISA)"
• transfer to the World Intellectual Property Organization ("WIPO")
• publication of the international patent application including a search report after 18 months
• international examination report
• transfer to designated national patent offices
• start of national phases (within 30 months of the priority date)

Information from the German Patent and Trademark Office (DPMA)

Field of use
Inventions which are new, involve an inventive step and have an industrial application can be protected by a patent as well as by an utility model. However, it is important to mention that technical and chemical processes can only be patented but cannot be protected by an utility model.

Term
Utility models confers exclusivity for a maximum period of only 10 years. This is an important difference to patents. A patent can be maintained for a period of 20 years, in special cases (drugs) for a period of 25 years.

The legal protection of an utility model is initially valid for 3 years. After 3, 6 and 8 years the legal protection can be extended. At each step a maintenance fee has to be paid.

Process
The patent office does not check the novelty, inventive step and industrial application of an utility model. Only in a later cancellation procedure or infringement suit these conditions are examined. Therefore an utility model can be achieved simpler, faster and cheaper than a patent. But there is also a bigger risk that it will be attacked and revoked.

Patents in contrast are only granted after an examination of novelty, inventive step and industrial application. These step are often very time-consuming and costly.