Frequently Asked Questions (FAQ)
The inventor consultation is free of charge for members of Freie Universität Berlin. Interested parties are asked to contact the Patent and License Service (PULS), which also accepts invention disclosures.
The invention must incorporate novelty, an inventive step, and commercial applicability as fundamental requirements. The invention must be described precisely in the patent application and documented in the patent claims. 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 is valid for 20 years from the application date. Incremental annual fees are due starting from the third year.
The subject of a patentable invention must be technical in nature. In other words, 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 schemes 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, who are granted a license, or be used by the inventors to found companies. The intellectual property, as it is known, is then placed under legal protection. As a result, it constitutes a limited monopoly.
Other industrial property rights include the utility model, which is for technical inventions, and the registered design, which is for aesthetic designs or models. Copyright protects works of art, science, and literature, e.g., text-based works. These also include computer programs. The names of goods and services may be protected as brands. Other property rights are included in the German Plant Variety Act for plant varieties and the German Semiconductor Protection Act for microelectronic semiconductor products.
The following costs are currently incurred for a German patent application valid in Germany, as payable to the German Patent and Trade Mark Office (DPMA):
- Application procedure: 40 euros for an electronic application, 60 euros for a paper application
- Research: 300 euros
- Investigation procedure: 350 euros
- Annual fees for third to twentieth years (incremental): 70 to 1,940 euros
In addition to the costs collected by the patent office, patent attorney fees between approx. 3,000 and 6,000 euros are generally incurred for a patent application in Germany.
Patent applications in other countries are subject to the country’s own schedule of fees for government authorities and attorneys.
A patent, maintenance thereof, and possible defense against patent infringements cost money. It is, however, an essential requirement for an invention to make a profit and for the inventor to receive a proportionate amount of the profits.
Revenue can be generated by issuing licenses or selling the patent. Contact is made with interested companies for this type of commercial exploitation; negotiations are conducted on the form of the license as well as its terms and length.
The maximum term of a patent is 20 years from the application date. Rights of prohibition against third parties using or imitating the invention may be enforced once the patent is granted. Many patents expire early due to non-payment of annual fees because no opportunity for exploitation arises for the patent holder, who is no longer willing to assume these costs if the patent does not generate revenue.
The patent application must certainly be filed before any publication (lecture, article, etc.), as otherwise the invention would be disclosed to the general public and no longer considered new. In Germany and Europe publication is understood as verbal or written communication or use of the invention in such a way that the quintessential aspects of the invention become discernible.
We recommend submitting an application at an early stage, since the invention must be considered new all over the world. Research groups often work on similar issues across the globe. Another person may have the same inventive concept as you do and be the first to apply for a patent. If this is the case, you will come away empty-handed.
If a publication revealing the content of the invention is in the pipeline, then the university must be notified in good time (usually two months in advance), preferably in conjunction with the invention disclosure.
The application date is considered the date it is received by the patent office. From this date onward confidentiality no longer has to be maintained. A written confidentiality agreement is therefore recommended in advance of said application in the event of discussions with interested third parties, such as companies or fellow researchers.
A patent attorney is not required for an application in Germany, but a patent attorney must be contacted for an application abroad in the country in question. However, it may be prudent to consult a patent attorney for their professional advice, since the wording of patent claims is often complicated.
In-depth knowledge of patent law is indispensable in obtaining the best possible property right protection, since the wording of patent claims is of fundamental importance to the patent and any rights arising from it. The patent office often rejects incorrect applications for patents that otherwise would have been granted if the applicant had received prior expert advice and support. The applicant thus wastes valuable time, while later claims they make to property rights may not hold in later citations or in cases of dispute due to poor wording.
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 ten 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 a property right for which a great deal of background research has been conducted by a patent examiner, who officially verifies that the invention fulfils the patentability criteria, i.e., that it is unique and novel, includes an inventive step, and that it is industrially applicable.
Up to 90 percent of the information we have on the current state of technology can be found in patent literature, especially in long-established sciences and disciplines such as mechanical engineering or chemistry. You can avoid costly double inventions by conducting patent research. Not only that, but you can enrich your own knowledge by examining the ideas and potential solutions of other inventors and thus establish a solid foundation before embarking on your research. Carrying out professional research is often useful for your own patent application, since you learn about the state of technology around the world and can better assess the preconditions for patenting, especially with regard to innovation.
You also gain an overview of your potential market and prospective licensees or competitors through research.
Anyone can carry out their own patent research. As with all search engines, it is essential that you enter the right search terms in order to gain access to all necessary information. You can find free providers of databases with information on patents on the internet. The Patent and Licensing Service will be happy to assist you.
The Patent and License Service (PULS) also conducts patent research as well as literature and market research to assess patentability and the possible scope of protection when evaluating inventions.
There are professional researchers who specialize in this subject. You will also find information and research centers dedicated to conducting paid professional research, evaluating technology, and making property right strategy recommendations with the aid of market analyses.
The German Employee Inventions Act (ArbnErfG) governs the rights and obligations of the employee and employer in the event that the employee makes an invention. It includes special regulations for inventors at universities. A “job-related invention” is produced by an employee within the scope of an activity assigned to them at the university or based on their expertise or activities as pertaining to their employment (Section 4.2 of ArbnErfG). Job-related inventions must be reported, are considered the property of the university as an employer, and may be subject to a patent application by the university, with the obligation to remunerate the inventor. This includes inventions from secondary employment activities and externally-funded research. All other inventions made by the employee in a completely different area are considered non-job-related inventions; however, employees are still obligated to notify their employer (Sections 18 and 19 of ArbnErfG). Students who do not have an employment relationship with the university are considered independent inventors and may freely dispose of their invention. Since February 7, 2002, the university has been permitted to lay claim to the inventions of all employees following the amendment to Section 42 of the German Employee Inventions Act. Since February 7, 2002, inventors have been entitled to reasonable remuneration (Section 42.4 of ArbnErfG) at a rate of 30 percent of the gross revenue generated through commercialization. If there are several inventors, then the inventor remuneration is split among them proportionately. This remuneration of 30 percent means that inventors from the higher education sector are significantly better positioned than employees from industry.
The inventor’s personal rights are non-transferable. The inventor is and remains the inventor, and shall be explicitly named as the inventor on all documentation (application, patent specification, etc.). He or she may use this for advertising, even if the university is officially the patent applicant.
As soon as an invention disclosure is received by the Patent and License Service (PULS), a short formal review of documents is initially conducted to ensure they are complete and comprehensible. Another review is then conducted to ensure that the invention incorporates novelty, an inventive step, and the potential for commercial exploitation. The university shall decide, within a statutory deadline of no more than four months, whether the invention is to be claimed on the part of Freie Universität Berlin or released to the inventor.