A patent is a right of prohibition against third parties. Without the consent of the patent holder, third parties are forbidden to produce, apply, or commercially use the invention under patent protection.
The invention must fulfil the requirements of novelty, an inventive step, and commercial applicability. The invention must be described precisely and indicated through patent claims in the patent application. In addition to formal information on the applicant and inventor, an application must be submitted to the patent office for the granting of a patent and fees must be paid. If a patent is granted, it may run for 20 years from the application date. Increasing annual fees fall due starting from the 3rd year.
The subject of a patentable invention must be technical in some form. It may be a device, machine, appliance, chemical substance, mixture of substances, operating procedure, manufacturing process and its product, or procedural use. For example discoveries, scientific theories, aesthetic creations, and plans and rules for intellectual activities, are not patentable.
A patent protects an invention from imitation by third parties. The right to the invention can be marketed to interested parties through award of a license or used internally in the form of foundations of companies. “Intellectual property” is placed under protection. As a result it constitutes a time-limited monopoly.
Other property rights include the utility model for inventions and the registered design for aesthetic design or models. Copyright protects works of art, science, and literature, e.g., text-based works. These also include computer programs. The name of goods and services may be protected as brands. Other property rights are included in the Plant Variety Protection Act for plant varieties and the Semiconductor Protection Act for microelectronic semiconductor products.
For a German patent application valid in Germany the following costs are currently incurred, which are payable to the German Patent and Trade Mark Office (DPMA):
In addition to costs at the patent office, there are patent attorney fees of between approx. 3,000 and 6,000 euros for a patent application in Germany.
Patent applications in other countries are subject to the country’s own schedule of fees for authorities and attorneys.
A patent, maintenance thereof, and possible defense against patent infringers cost money. It is, however, an essential requirement for an invention to make a profit and for the profit to be received by the inventor proportionately.
Income can be earned through the award of a license or sale of the patent. Contact is made with interested companies for this type of exploitation; negotiations are conducted on the form and the terms of license award and term of the license.
The maximum term of a patent is 20 years from the application date. Rights of prohibition against third parties using or imitating their own invention may be enforced from the granting of the patent. Many patents expire early due to non-payment of annual fees because no opportunity for exploitation is produced for the patent holder, who would no longer be willing to assume the running costs without any income.
The patent application shall essentially be filed before any publication (lecture, article, etc.) since otherwise the invention would be disclosed to the general public and no longer new. In Germany and Europe publication is understood as meaning verbal and written communication or use of the invention in such a way that the essence of the invention can be registered.
An application shall be recommended in good time, since the invention must be new around the world. Researcher groups often work globally on similar issues. Another person may have the same inventive concept and be first to apply for it as a patent. And then you will come away empty-handed.
If publication is planned, revealing the content of the invention, this shall be notified to the university in good time (usually two months in advance), preferably in conjunction with the invention disclosure.
An application date is set on the date of receipt at the patent office. Pursuant hereto confidentiality is no longer required. A written confidentiality agreement is therefore recommended in advance of the application for discussions with interested third parties, such as companies or fellow researchers.
No patent attorney is required for an application in Germany, and a patent attorney must be contacted in the relevant country for an application abroad. In Germany too reference is usually made to the specialist advice of a patent attorney, since the wording of patent claims is complicated.
Precise knowledge of patent law is indispensable for optimal property right protection, since the wording of patent claims is of fundamental importance to the patent and rights from such. The patent office often rejects incorrect applications for patents, which could result in the granting of a patent with expert support. On the one hand, valuable time can therefore be lost and, on the other hand, the applicant’s property right might not hold its ground due to poor wording of later citations or in case of disputes.
The utility model is often referred to as a “petty patent.” The utility model is granted more quickly, easily, and cost-effectively than a patent. It has a term of 10 years. However, the utility model is an unexamined property right, since it is only registered by the patent office and not reviewed. A patent on the other hand is an examined property right.
Up to 90% of the current state of technology is often ensconced in the patent literature, especially in long-established sciences and disciplines, such as mechanical engineering or chemistry. Costly double inventions can be avoided through patent research. Suggestions and approaches by other inventors enrich their own knowledge and may point the way before the start of research. Professional research is often sensible for one’s own patent application, since it provides information about the state of technology around the world and preconditions for patenting (in particular innovation) can be better assessed.
In addition, an overview is gained of the possible sales market and potential licensees or competitors through research.
Everyone can conduct their own petty patent research. As in all search engines the correct entry of search terms is also important here in order to register all information. There are free providers of databases containing patient information on the Internet. The Patent and License Service would be happy to provide you with advice.
For evaluation of inventions the Patent and License Service also conducts patent research as well as literature and market research to assess patentability and the possible scope of protection.
There are also researchers who only deal with this subject, and special information and research centers as providers of paid professional research with technology evaluation and recommendation of a property right strategy through market analysis.
The Employee Inventions Act (ArbEG) governs the rights and obligations of the employee and employer if the employee makes an invention. There are special regulations here for inventors at universities. A “job-related invention” (service invention) exists if an invention was generated from activity at the university or is based on experience from such activity (section 4(2) ArbEG). Job-related inventions are definitely notifiable, belong to the employer, the university, and may be subject to a patent application by university with the obligation to remunerate the inventor. This includes inventions from secondary employment activities and externally-funded research. All other inventions of the employee in a completely different territory are “free inventions,” and notification obligation to the employer exists for them (sections 18, 19 ArbEG). Students without an employment relationship with the university are free inventors and may freely dispose of their invention. Since February 7, 2002, the university has been able to utilize the inventions of all employees due to the amendment of section 42 of the Employee Inventions Act. Since February 7, 2002, inventors have been entitled to reasonable remuneration (section 42.4 ArbEG) at a rate of 30% of gross exploitation income. In case there are several inventors, the inventor remuneration is split. With remuneration of 30%, inventors from the higher education sector are significantly better positioned than employees from industry.
Costs are assumed by the employer, i.e., Freie Universität Berlin. Ideally the inventor’s working group would have project funds provided for this purpose or freely available funds which may be dedicated to this purpose. No costs shall be incurred by the inventor as a private individual.
The inventor’s personal right is nontransferable. The inventor is and remains the inventor and shall be explicitly named everywhere as the inventor (application, patent specification, etc.). He or she may use this for advertising even if the university is officially the patent “applicant.”
Following receipt of an invention disclosure at the Patent and License Service, a short formal review of documents is initially conducted for completeness and comprehensibility. A review is subsequently conducted for novelty, inventive step, and commercial exploitation potential. The university shall decide, within a statutory deadline of at most four months, on whether the invention is claimed or released to the inventor.