Frequently asked questions

The German Patent and Trademark Office (DPMA) says inventions in “all areas of technology” are patentable (details here). That does not necessarily mean new engines or sensors. For instance, new software may be patented if it is linked to a “technical solution.” Or a transgenic plant for which an inventor can prove that it solves an economically relevant problem better than existing crops. The Technology Transfer Office will be happy to advise you on each individual case.

Alongside patents there are other categories of protection (read here). For example, the entire University of Tübingen logo, including the palm tree, lettering, and color, is protected as a separate trademark.

The core elements of a patent application are the patent claims, the current “state of the art,” and a description of the invention that also classifies it in relation to the state of the art; it may be supplemented by drawings. Further details here.

That depends largely on the strategy to be pursued.

First, there is a search to establish whether there are already publications or patents in the field of a new invention disclosure. If the University then claims your invention, a standard procedure could look something like this:

As a priority claim, we start with a patent application at the German Patent and Trademark Office (DPMA). From the filing date, we have exactly one year to file subsequent applications, which allow us to secure claims for other countries. Ideally, this is done via a PCT application (Patent Cooperation Treaty, an international treaty on international cooperation in the field of patents). Details here). A PCT application does not lead to a patent being granted, but it does give us an additional 18 months' grace before we have to initiate “nationalization” or “regionalization” in all countries where we actually want to obtain a patent. Only then can patents be granted. Before that, however, examination and search reports in the context of the priority claim and PCT applications have given us important information about our chances of obtaining a patent.

It is our job to ensure that all deadlines are met. The Technology Transfer Office will consult with you in good time about how to proceed.

An important date: 18 months after the filing date, the relevant patent office will publish the application, which will then be available worldwide for anyone to view and searchable in patent databases. Important: The disclosure document does not constitute a patent and does not grant any right of prohibition against third parties. Only when a patent has been granted may action be taken against third parties who use the patent without having acquired rights of use from the patent holder.

In principle, a patent is valid for 20 years from the date of application. For pesticides or pharmaceuticals, this period may be extended by five years. Details here.

This means that the official process (it can take years for a patent to actually be granted) cuts into the useful life of a patent.

A very important point. Until the date of the priority claim, your invention must not be known anywhere. A poster at a conference, a publication, or a seminar presentation in which you publicly present your invention, especially technical solutions and mechanisms of an invention, usually mean the end of a patent application. This is because you are making your invention “state of the art.” Examiners at patent offices are increasingly searching the internet for lecture announcements or conference proceedings, often starting with the inventors' own publications.

Even a public defense of a thesis that describes an unpatented invention has consequences in this regard. Any patent examiner can later research this date and argue that your invention was published on that day.

However, as soon as you have received confirmation of a priority claim from a patent office, you can publish your results without this being detrimental to the novelty of a patent application.

The publication of theses is also a tricky case. We therefore ask you not to delay your submission of an invention disclosure until just before its publication. Because we need to do a lot of work beforehand.

We need several weeks for the initial evaluation and assessment of an invention disclosure. A patent search cannot be completed in half an hour. The law gives us four months to carry out this process; we will not usually need the full four months. A patent attorney, once commissioned, also needs some time to draft an application. The sooner you contact us and we start working together, the smoother the entire process will be, including your plans for publications. This also makes it easier to discuss further options: ahead of talks with company representatives, you can make confidentiality agreements. We can arrange this for you; please phone us in this matter. A completed diploma or doctoral thesis may also be restricted to “internal” circulation for a while.

Sometimes, even after filing a priority claim, it may make sense to keep an invention secret. Patent applications are only published by the authorities 18 months later. For a company founder, this is valuable time to prepare before the competition catches on.

Because that is what the law requires in most countries. Patents are only granted for inventions that are new compared to what is termed the “state of the art.” As soon as an invention has been described and published somewhere in the world, it is no longer new!

That depends very much on the field in which an invention is set to operate. Inventions usually only become patentable once evidence has been presented showing that they actually achieve what inventors intend them to achieve. The umbrella term for this is “proof of concept.”

In the case of physics or engineering inventions, a plausible sketch of the idea may suffice under certain circumstances. However, the more concretely an application is described, the higher the chances of obtaining a patent and commercially exploiting the invention. Potential customers are much more likely to take notice of a new technology that includes a finished prototype, possibly even in a live demonstration, than a vague declaration of intent.

A prototype reinforces an engineering invention, just as proof of effectiveness does in other areas, such as pharmaceuticals or chemical catalysts. Patent offices are also increasingly demanding that a potential new pharmacological agent has proven its capabilities at the least in animal models.

Essentially, there are three key concepts: novelty, inventive step, and industrial applicability. We are happy to advise you directly on these often very complex issues. Give us a call. Further details here and here.

Financially, nothing at all. The University bears the costs of patenting. However, we absolutely need your cooperation as a discussion partner during the application process, which often takes years, and for commercialization, as well as in very specific areas, such as drafting a technology offer. (See also misconceptions: “When it comes to registering an invention, there is too much red tape for me“ and “I did my bit when I submitted the invention disclosure“)

Patents developed over time as an instrument for promoting technological progress. One of the main objectives is to ensure that inventions do not remain hidden away for fear of imitators or competition. Patents are designed to encourage inventors to publish their ideas. In return, they grant inventors the right to prohibit others from using their invention for a limited period of time. Inventors can decide for themselves whether others are allowed to use their invention and, if so, under what conditions. In the latter case, they grant limited or unlimited rights of use through licenses.

Many experts consider the option of using an invention exclusively for a limited period of time and making a profit commercially without competitors to be a guarantee for innovation and technological advancement. They say only then does make economic sense to invest in inventions and innovative developments. (More information  here and here).

Every patent application is published 18 months after the priority claim, , thereby becoming part of the state of the art. Then it need not be reinvented - but it may be used as a starting point for others’ inventive activity. The wheel does not need to be reinvented.

At the same time, this process ensures that inventions become accessible to everyone. Unlike the archives of many scientific journals, patent databases are accessible to everyone and are a valuable source of research, even for basic researchers who want to learn about innovations in their field.

Not at all. Generally, an invention, especially if it comes from basic research, first has to be exhaustively developed to market readiness. It is very important to note that without long-term cooperation with you as the inventors and thus as the experts, the chances of this happening are greatly reduced. The ideal situation is often to find business partners who will work with you during the years-long application phase to develop commercially interesting applications for your invention.

In case of doubt, they don't have to. Patent law expressly exempts “experimental purposes” and research for “non-commercial” purposes from the licensing requirement (§11 Patentgesetz).

Of course, disputes do occur in individual cases. In April 2011, the journal Nature reported that the Alzheimer's Institute of America (AIA) was attempting to issue warnings to basic researchers at state research institutions and universities for alleged patent infringements and to force them to make dubious license payments. Other negative headlines have been generated by the dispute over genetic testing for breast cancer between Myriad Genetics and clinical institutes that want to offer such tests to patients at low cost.

And yet these remain isolated cases. Overall, recent studies suggest that patents can greatly promote research and science, including basic research (see misconception: “Patents tend to hinder research and technological development instead of helping them.”).

For inventions made by someone in the course of their professional duties: No. Since 2002, the law governing inventions arising with employees at work, the Arbeitnehmererfindungsgesetz, has applied to all university employees. (It always applied in industry.) This law stipulates that you must report any inventions you make in the course of your professional duties to your employer. You can find the form for an invention disclosure here.

Once your disclosure has been received, the University of Tübingen has four months to decide whether it wishes to claim your invention. If this is the case, it is obliged to apply for a patent.

Assuming that the patent is subsequently granted, the University will be the patent holder. However, all inventors will be named in the patent application and will, of course, receive a considerable share of all proceeds generated by the invention.
If, on the other hand, the University releases your invention within four months of receiving the notification, you can decide whether and how you want to apply for a patent, but you will have to finance any application yourself.

If we succeed in exploiting a patent, for example through a licensing agreement, the inventors receive 30 percent of the gross income. In addition, a considerable portion of the remainder goes to the institute where you work in the form of research funding. Further details (see also misconceptions “Only the University profits from my patent” and “There are no advantages for me in reporting my invention”).

In all countries in which a patent has been granted.

We have not yet encountered such a case. In principle, it is the responsibility of a patent holder to prove infringements. In other words, active research into patent infringements is necessary. After that, it is important to enforce one's claims. If a product pirate does not cease his/her illegal activities, legal action must be taken in all countries where patents are held and rights are to be enforced. Large corporations can afford to have entire departments dedicated to this; a university's options are more modest, although by no means zero. Further details here.

No, although such patent blocking has reportedly occurred in industry. Patent law’s explicit intention if for patents to be utilized. Under certain circumstances, there is even the legal instrument of a compulsory license if a patent for an important invention remains unused because a manufacturer does not use it itself and does not grant any licenses. Some countries even require the patent holder to provide regular proof that they are using their patent.

For a university, this is not an issue; our explicit goal is technology transfer, precisely so that inventions from a university ultimately result in products. In license agreements, we strive for usage clauses (“best effort”) to ensure that a licensee continues to develop the invention.

If you made an invention in the course of your employment, the answer is no. Under the relevant law, the Arbeitnehmererfindungsgesetz, the invention belongs to the University of Tübingen. In the case of a “free invention,” this does not apply (see “What is a free invention and a free inventor?“).

Yes. Paragraph 18 of the Arbeitnehmererfindungsgesetz stipulates that employees must report all inventions, including free inventions, to their employer. This is specifically so that the employer can check whether it is a free invention or a workplace invention. See also the questions:

• Does my invention belong to me?
• What is a free invention and a free inventor?
• What happens if I am at the University as a grant holder and not employed by the University and I invent something?

A free invention is one that you have developed entirely independently of your professional activities. A hypothetical example: if you work as a mail carrier and develop a new propeller drive for model airplanes in your garage at home, you have most likely made a free invention. On the other hand, an employee of an automotive company who develops a new drive for car engines, even if it is in his/her garage at home, is very likely to have made a “work invention” because it is directly related to their work.

To clarify this, employees must always report all inventions to their employer if they are to be made available to the public. The employer then decides whether it is a free invention.

This depends primarily on your grant provider. In many cases, you are not obliged to report your invention to them. In most cases, you are also not obligated to report it to the University of Tübingen. In principle, you are then considered a “free inventor” (see also: What is a free invention and a free inventor?)

We at Technology Transfer could still act on your behalf in this case if:

• there are co-inventors who are employed at the University and
• you transfer the rights to your shares of the invention to the University of Tübingen.

Anyone who has made an inventive contribution to an invention. Anyone who has contributed ideas to a key experiment in the search for a new active ingredient is a co-inventor. On the other hand, anyone who has only carried out measurements on behalf of others in this experiment does not usually make an inventive contribution. Transparency and fairness are also important here: All co-inventors must be named in the invention disclosure. If someone is overlooked, he or she may take legal action later.