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Humboldt-Universität zu Berlin

Humboldt-Universität zu Berlin | Research | Knowledge Transfer / Patents | Patents and Licenses | Frequently Asked Questions regarding Patents

Frequently Asked Questions regarding Patents

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How much does an inventors' consultation cost?
Nothing! Members of the Humboldt-Universität benefit from a free inventors' consultation as part of the service provided by the university. There is an internal contact point for members of the university; members of the medical faculty Charité should contact the academic administration.

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Who can be an inventor?
Anyone can be an inventor! Whether employee, student, research assistant or professor, anyone can have an idea for an invention, or be part of it. Inventions often occur as part of a team. This is how a team invention occurs.

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What is a patent?
A patent can be granted upon application to the German Patent and Trademark Office (Deutsches Patent- und Markenamt, DPMA) where the requirements for a technical invention of innovation, inventive step and industrial application are fulfilled. A patent is a prohibitive right against third parties. Third parties are prohibited from, inter alia, producing, using, or industrial application an invention that is patented unless they have the permission of the proprietor.

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How does an invention turn into a patent?
The invention needs to be described accurately in the patent application, and patent entitlements carefully drafted. Apart from the formal details concerning the party registering the patent and the inventor, an application for the grant of a patent must be made at the patent office and a fee needs to be paid. Where a patent is granted, it can run for 20 years from the date of registration. From the 3rd year onwards increasing annual fees become payable.

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What can be patented?
The object of a patentable invention must be of a technical nature in some form. It can be a device, a machine, a chemical substance, a mixture of materials, a new working process, a production process and its product or the application of a process. The invention must contain a technical character of the invention (so called Lehre zum technischen Handeln). Patents are not available for, amongst other things, discoveries and scientific theories, aesthetic creations plans and rules for mental activity, and computer software that is purely for data processing.

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What does one need patents for?
One's own invention should be protected against plagiarism by third parties. One's own know-how can be commercially exploited by the inventor himself. The right to the invention can be marketed to interested parties by granting licences or can be utilised oneself by way of setting up a business. For this, the so-called intellectual property needs to be protected. After all, one carefully locks one's car to prevent it from being stolen, but not everyone thinks of safeguarding their own intellectual ideas!

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What other industrial property rights are there?
In the case of technical inventions there is also the utility model, in the case of aesthetic creations or models there is the law relating to design patents. Works of art, scholarship and literature, such as linguistic works, as well as computer programmes are protected by copyright. Goods and services can be protected by trademarks. Other industrial property rights are the Plant Varieties Protection Act (Sortenschutzgesetz) for plant varieties, as well as the Semiconductor Protection Act (Halbleiterschutzgesetz) for microelectric semiconductors.

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How much does a patent cost?
A patent application and the granting of a patent incur costs by way of fees that are payable to the patent office. From 1 January 2005 the following fees will apply for a German patent, valid in Germany:

Application 60 EUR
Search 250 EUR
Request for examination 150 EUR
Request for examination including search 350 EUR
Grant of patent Now free of charge
Annual fees, increasing from the 3rd to the 20th year 70 - 1,940 EUR

In addition to the fees due to the patent office, there are legal costs of between 1,000 EUR - 2,500 EUR for one patent.
Patent applications in other countries are governed by the national fees and charges for offices and lawyers of those countries.

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How and when will a patent make money?
Never! A patent, its maintenance and possible actions defending it against infringements cost money. A patent is a prohibitive right against third parties. Nevertheless, this is a vital prerequisite for an invention to generate profits and for ensuring that these will go to the inventor and not to a competitor. Revenues can be generated by granting licences or by selling the patent. For these forms of exploitation contacts are made with interested companies, and negotiations held about the type of licence grant and the length of the licence.

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How is the distribution of profits organised?
Since the 7nth of February 2002 (amendment of section 42 of the German Act on Employees' Inventions -Arbeitnehmererfindungsgesetz) inventors have been entitled to 30% of the gross proceeds from exploitation. The remaining proceeds will recover the costs of patenting from this. If the university is left with a profit after these costs have been deducted, there is an additional science friendly agreement regarding the distribution of proceeds within the university.

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How long is a patent protected for?
A patent generally has a lifetime of 20 years from the date of registration. The prohibitive rights against third parties to use or imitate the own invention can be enforced from the point of the grant of the patent. The granting of the patent takes place after the request for examination, and after examination by the patent office. This means that the 20-year-lifespan of the patent is thus shortened by this period of time from the date of the registration until the date of the grant. Many patents even lapse prematurely, when the annual renewal fees are not paid because the proprietor does not have any possibilities of exploiting the patent and he is no longer willing to bear the running costs without possible revenues.

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From what point on does one need to register an invention as a patent?
It is imperative that a patent registration takes place before any publication as the invention would otherwise already be public knowledge and would no longer be novel. In Germany and Europe generally, publication is understood to mean both oral and written communications or use of the invention in such a way that the substance of the invention can be grasped.

Early registration is recommended, as the invention has to be novel across the world. Often research teams across the globe work on similar projects. Someone else might have the same idea for an invention and register it first. In such an event one would end up empty-handed. (However, different conditions apply in the USA.)

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How long does one need to maintain secrecy about an invention?
The date of registration is determined by the date of receipt of the application at the patent office. After this date it is no longer necessary to maintain secrecy for fear of endangering the patent. However, it is only once the patent has been granted, that a prohibitive right against others can be enforced. It is recommended that a written confidentiality agreement is used when negotiating with interested third parties, such as companies.

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Does one need a patent agent in order to register a patent?
No! It is not necessary to employ a patent agent for registering a domestic patent. For registration in other countries one needs to consult a lawyer in the applicable country. Usually, however, one obtains the advice from a patent agent in the case of domestic patents.

In order to achieve an optimal protection of one's industrial property rights a thorough and detailed knowledge of patent law is absolutely vital, since the phrasing of the patent claim is of central significance for the patent and the rights arising out of it. Frequently the patent office rejects faulty patent applications which could have resulted in a patent being granted had they been prepared with competent support. On the one hand this might lead to a loss of valuable time, on the other hand it means that the protection granted might not stand up to later citations or possible disputes.

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What is the difference between a patent and a utility model?
A utility model is often referred to as "little patent", as it has a lifespan of 10 years and the technical invention only needs to contain a small inventive step. A utility model is obtained more quickly, easily and at less expense than a patent, however, it is an unexamined industrial property right, as it is only registered by the patent office and not examined by it. In the case of an infringement dispute it may succumb. A patent on the other hand is an industrial property right that has already been examined after all.

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Why is a patent search necessary?
Why re-invent the wheel? Frequently up to 90% of the prior art is contained within the patent literature, particularly in old established sciences and subject areas, such as engineer or chemistry. In this way expensive duplicate inventions are avoided. Suggestions and approaches by other inventors enrich one's own knowledge and can provide some direction before commencing research. For the purposes of registering one's own patent a professional search is indispensable, as it provides information about prior art world-wide, and requirements for patenting (such as novelty and the advance as opposed to the prior art) can be judged more accurately.

Moreover the search provides an additional overview over the possible target market and potential licensees or competitors in the field of one's own invention.

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Who does the search?
There are some providers on the internet who offer data bases with patent information free of charge. See Important addresses on the world wide web. Anyone can conduct their own little patent search. As with all search engines, the way the search terms are entered is important to grasp all information.

There are also researchers who only deal with this, as well as special information and research centres who, for a fee, offer a professional search including an assessment of the technology and a recommendation of a protection strategy by way of a market analysis.

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What is governed by the German Act on Employees' Inventions?
The Act governs the rights and obligations of the employee and the employer where the employee makes an invention; particular rules apply for inventors at universities.

Generally an invention will be an employment invention where an employee makes an invention during the term of his employment contract, which
- is based on his duties, or
- is based on important experiences or work of the university, and
- an invention which is made by an employee of the university in the course of his work.

There is a requirement to notify these inventions to the university. They belong to the employer, the university, and can be registered by it, with an obligation to compensate the inventor. Other inventions, made in an unrelated field, may be free inventions but they too need to be notified to the university, so that the employer can check this, and they need to be offered to the employer for non-exclusive use. Students who do not have an employment contract are free inventors and can exploit their inventions freely.

Due to the amendment of section 42 of the German Act on Employees' Inventions, since 7 February 2002 the university can also claim the inventions of professors, lecturers and research assistants. Sine 7 February 2002 the inventors are entitled to 30% of the gross exploitation revenues.

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What costs are borne by the Humboldt-Universität in the case of an invention?
Since January 2002 the Berlin universities have been supported by the newly founded exploitation company in patenting and exploiting their inventions. Thanks to funding by the Federal Ministry of Education and Research, the universities and the exploitation company will be supported financially til 2006.

Thus the Humboldt-Universität can also register, patent and exploit their own employment inventions at their own expense. Moreover it needs to give the inventor a 30% cut of the gross revenues from such exploitation.

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What advantages are there in the exploitation of the inventions by the university?
The costs of the application, search, grant of patent and legal costs are borne by the university, if it unreservedly claims an invention. It is obliged to pay the compensation to the inventor, without him having to worry about the registration and patenting modalities or the marketing. In the event that the inventor has already made contact with lawyers or licensees, or he wants to set up a spin-off, the university will bear this in mind.
Many inventors welcome this "division of labour". They can carry on with their research and inventing, undisturbed, and following a short consultation with inventors' advisor the university deals with everything else upon transfer of the rights and an obligation to compensate.

Of course the university expects that increasing licensing fees resulting from the commercial exploitation of the invention will exceed the costs incurred. Such surplus monies can then be directed towards research and teaching at the university. In this way both fundamental and applied research can profit equally in future, while today we still need to prioritise due to a poor financial situation.

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What does one have to do if one wants to remain an inventor?
Absolutely nothing! The inventor's personal rights are non-transferable. The inventor is and remains the inventor and will be named everywhere as the inventor (registration, patent specification, etc). He may also advertise that he is the inventor of his invention, even if the patent was registered by the university.

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