The most common misconceptions about patents

“Publishing and patenting are mutually exclusive, because patents are only granted for inventions that have not yet been published. Since I may have to keep my results under wraps for years, I may not have any chance of publishing them at all. Graduates and doctoral students certainly cannot afford such a long wait.”

This is a misunderstanding. To preserve the chance of obtaining a patent, an invention only needs to remain secret until an application for a patent has been submitted to a patent office. This itself is a quick process; it only takes a few minutes to send the relevant fax. However, we need some time beforehand to evaluate your invention and, if necessary, to prepare the application. Once the application has been filed, you are free to publish your data without this being “detrimental to novelty” in respect of patenting. However, there is no question that before the deadline for the priority claim, you may not publish your invention anywhere. This includes journal and newspaper articles as well as lectures and posters at conferences.

The solution: Give us the opportunity to speak with you ahead of planned publications so we can assess whether and where a research project could lead to an invention.

“When it comes to registering an invention, there is too much red tape for me. As an inventor, I have to invest a lot of time in patenting, from writing the invention disclosure to the necessary correspondence with lawyers and authorities. This means I have to take on a lot of extra work."

It won't be that bad. It doesn't take much time to fill out an invention disclosure form. Then you give us a brief presentation of your invention and we discuss the potential opportunities for patenting and commercialization. We then take care of all further correspondence with authorities and patent attorneys. However, we will still need your cooperation as the application process progresses. Whether it's writing a description of the new technology, responding to a search report from the patent office, or talking to a potential interested party, we will need to consult with you and get your input from time to time. You are and will remain the originator of the technology; you know your invention and its context inside out. Would that be such a problem?

“I will face an immense cost of applying for a patent.  I have to cover the costs for the patent attorney and the official fees. And the technology transfer staff must be remunerated.”

No. If, in consultation with you, we come to the conclusion that your invention has a chance of being patented and commercially exploited, we will submit a proposal to the University of Tübingen to claim your invention. The University will then bear all the costs of further proceedings. The technology transfer staff are University employees and therefore do not charge any fees.

“Only the University profits from my patent Any income from the commercial exploitation of patents goes mainly to the employer, i.e. the University and the employees of the technology transfer office.”

No. The University earns money from commercialization, but it is by no means the only one. The law stipulates that inventors at universities receive 30 percent of gross proceeds. That is significantly more than what inventors receive in industry, for example. And almost all of the remaining 70 percent flows back into research. (See “There are no advantages for me in reporting my invention.”)

“My invention will be put on the shelf. The University only administer the inventions.”

Please! We have no interest in work that ends up on the shelf. We are very interested in a rich patent portfolio, from which we can benefit as much as possible. For you and for the University.

“Inventions and patents from universities generally have little economic value. The domain of universities is basic research, and working groups lack the time and money for the necessary commercial development, which is why inventions from academia usually have little chance of making money.”

This is indeed a problem area, but there are solutions. Universities focus on basic research. It is often a long road to get a product on the market. However, public research funding bodies such as the German Research Foundation (DFG), the German Ministry of Education and Research (BMBF), and the German Ministry for Economic Affairs and Energy (BMWi) have special funding pools to further develop findings from basic research into commercial technologies. Companies are also always on the lookout for new ideas and concepts from basic research. For example, the pharmaceutical industry has been struggling with a deficit for several years: the pipeline of new active ingredients is running dry. Some large manufacturers are currently exploring whether drugs developed by universities are candidates for commercial use.

“Without an invention, there's no point in me even showing up at the technology transfer office. They don’t lift a finger before I submit an invention disclosure there."

On the contrary. Whether you have general questions or are still in the early stages of developing project ideas: the sooner we learn about your plans, the better we can explore the potential patent landscape in a timely manner (“Is a patent still possible, or has the idea already been patented, at least in part?”). And the sooner we know about your plans, the better we can discuss the appropriate time to file a possible patent application, and perhaps also search for necessary project partners.
We therefore welcome your call, email, or letter at an early stage. This applies to all questions regarding the context of inventions, patents, or starting a company.

“I did my bit when I submitted the invention disclosure. The technology transfer office will take care of everything else, including patent registration and commercialization.”

Not quite! An invention disclosure does not automatically lead to a patent application. It may be that an invention has already been patented, and the chances of commercialization also play a role in the decision as to whether the University will claim an invention at all.

Only when an invention is claimed does the University assume the obligation to apply for a patent and seek commercialization. However, this process only has a chance of success if the technology transfer office and the inventor continue to work together closely. In concrete terms, this means, for example, that we need your cooperation in writing a technology description and would be happy to use your contacts for possible commercialization. You are and will remain the technology’s originator without whom it would not be possible.

What's more, in many fields, new patents will only be successful on the market if working groups at universities develop projects over the long term and take potential applications into account. Even if a potential active ingredient shows interesting results in initial in vitro tests in the laboratory, it is still a long way from reaching pharmacies. 

“As the inventor, I will also be the patent holder.”

Unfortunately not. The applicant, also known as the patent holder, is the entity who owns the rights to an invention. In your case, this is the University if it claims an invention. This has been the case since 2002 for universities under the law regulating employee inventions, the Arbeitnehmererfindungen-Gesetz. However, the inventors are specified in all publications in connection with the patent. And the applicant, in this case the university, shares all profits with the inventors. (See “There are no advantages for me in reporting my invention.”)

It may happen that the University does not make use of your invention and will release the rights to it to you. Assuming you then decide to apply for a patent yourself, you are both the inventor and the applicant.

“Patent attorneys are lawyers; they don’t know much about research and science and therefore cannot understand my invention properly or only after lengthy explanations.”

Sorry, but that is incorrect. Patent attorneys are not lawyers. They are scientists: chemists, engineers, physicists, computer scientists, and biologists. The title of patent attorney is acquired after completing a specialized three-year training program following a degree in the relevant field.

“There are no advantages for me in reporting my invention.  Even though I am legally obliged to do it, reporting an invention is just a lot of work, and in the end, the invention belongs to the University anyway."

This is not accurate. If a patent is successfully licensed or sold, the inventors receive 30 percent of the gross proceeds as taxable income. After deducting the costs incurred for the patent, the remainder is divided between the University and the institute where the inventors work. The majority of the revenue thus flows back to the inventors and into research.

In addition, there is a strategic gain for every researcher. In addition to publications, patent applications are becoming increasingly important in research proposals. Here, too, quality takes precedence over quantity.

“The technology transfer office has funds for the development of inventions and for applied research.”

Unfortunately, no. We do not have the funds. However, we can work with you to research other funding opportunities to help inventions along whose feasibility still needs to be demonstrated or for which a prototype still needs to be developed. (see also “Inventions and patents from universities generally have little economic value.”)

“Patents tend to hinder research and technological development instead of helping them. So as a basic researcher, I want nothing to do with patents."

This is an interesting topic. Even today, experts still debate whether patents really always promote progress and innovation, as illustrated by many disputes in individual cases (see FAQs: What benefits do industrial property rights have for society? )

Nevertheless, problems in individual cases do not necessarily mean that the regulations generally are flawed. Patents are usually what make it possible to successfully transfer research results into practice. And if, hypothetically, universities did not take advantage of their opportunities with patents, they would ultimately only be squandering valuable revenue opportunities for their own research and development. In the US alone, small biotech companies and universities contributed 56 percent of all truly innovative new active ingredients in pharmaceutical research between 1998 and 2007 (Nature Rev. Drug Discov. 9, 867ff (2010)).

Only through their own patents can universities profit from their inventions and thus ultimately recoup part of the government's research expenditure via commercial revenues. In this country, the law (Arbeitnehmererfindungsgesetz) has given them the opportunity to do so since 2002.

In the USA, the Bayh Dole Act granted state-funded research institutes the right to commercialize research results as early as 1980. Currently, the proportion of basic research in universities has by no means declined, but has rather been boosted by the incentive of commercial exploitation. (details here.)

“The technology transfer staff evaluate the scientific quality of the inventions.”

This is not the case. That is not our job. The value of a patent is primarily measured by the criteria of novelty, inventive step, and industrial applicability. In other words: Has something truly new been discovered in technical terms that no one has been able to produce or build in this form before? And is the invention economically applicable?

“A patent is always sold.”

No. In addition to sales, monetary gains may also be achieved through license fees from a patent. The ideal scenario is when inventors decide to start their own company and use it to drive forward the development of their invention. They then negotiate a license with the University.

“The University's technology transfer office is also for independent inventors.”

Unfortunately, no. We can only assist with inventions where at least one inventor is employed at the University of Tübingen. However, even if we receive a call from an independent inventor, we will try to put them in touch with the appropriate research contacts at the University.

More information on free inventors here and here.