Patents and Licences
The legal protection of research achievements
- Why intellectual property rights?
-
What legal protection is there?
Intellectual property rights
The concept of the invention
Inventions by members of the university
Copyright - Protection of computer programmes
I. Why intellectual property rights?
At universities there is a large and varied scientific research potential, which is often not used. The loss to the German economy resulting from this is often lamented. Frequently the reason for this can be found in the fact that it is unknown in scientific institutions in what way the results of research can be protected against the unhampered grasp of third parties and how the scientific know-how can be utilised commercially.
II. What legal protection is there?
The term "intellectual property rights" encompasses the laws that serve to protect intellectual accomplishments in a commercial setting. It includes the law relating to patents, utility models, design patents, trademarks and competition. As far as scholars are concerned, it is primarily patent and utility model law that is significant, as they protect technical inventions. Provided that certain formalities are followed, particularly the registration of an invention at the patent office, the inventor is granted a certain right to the invention idea for a period of time. It follows, that on the one hand the proprietor of the patent or utility model is granted the authority to produce, offer, bring into circulation and utilise the object of the invention. On the other hand he has the possibility to fend off imitation and exploitation of the protected object. He can prevent others from using it, and any breaches of his rights can be pursued by way of actions for damages or injunctions.
Statute does not define precisely what an invention is; however, there is a catalogue listing inventions that are not capable of patenting. Pursuant to section 1 paragraph 2 of the German Patent Act (hereafter "PatG", from the German Patentgesetz) the following do not count as inventions: discoveries, as well as scientific theories and mathematical methods, aesthetic arrangements, plans, rules and methods for mental activities, for games or commercial activities, programmes for data processing equipment or the rendering of information. Similarly, patents are not granted for plant varieties or animal species, nor for essentially biological methods for growing plants and breeding animals (section 2 (2) PatG).
Nevertheless, there are various criteria according to which the patentability can be judged. According to these, an object can be patented, if:
- It contains a technical character of the invention (eine Lehre zum technischen Handeln),
- It is new,
- It involves an inventive step and
- It is commercially applicable.
Inventions by members of the university
Where inventions are made by employees of the university, the German Act on Employees’ Inventions (Arbeitnehmererfindungsgesetz, hereafter ArbEG) applies. It differentiates between so-called employment inventions and so-called free inventions.
Employment inventions (for example by research associates) are defined in section 4 ArbEG as those, that are made during the duration of the service or employment contract, and that have either developed from such activities of the inventor as were part of his work, or which are significantly based on experiences or work of the university. There is a notification requirement in respect of these inventions, and they may be claimed by the university as employer.
All other inventions are free inventions, which are generally at the free disposal of the employees. However, also free inventions have to be notified to the university. Moreover, the university shall be offered a non-exclusive right to make use of the invention before it is utilised otherwise (18, 19 ArbEG).
The former special rules regarding professors, lecturers and research assistants has ceased to exist with effect from 7 February 2002. From now on universities follow the basic principle that every invention by an employee of the university, acting in the course of his duty, may be claimed. In return, the inventor's bonus is now 30% of the gross exploitation revenues thereof.
The copyright law only applies to individual intellectual property in the field of culture. The German copyright act (Urheberrechtsgesetz, hereafter UrhG) at sections 1 and 2 declares works of literature, science and art as protected, and in particular lists the following examples: language works and programmes for data processing, musical works, works of pantomime, including dance, works of the visual arts, photographs, film productions and illustrations of scientific or technical nature, such as drawings, plans, maps, sketches, tables and plastic illustrations.
The author obtains the copyright to his work purely through creating it; unlike with technical intellectual property rights, an official award from the state is not necessary, nor does a fee need to be paid. The contents of the copyright include the authority to act (for example the authority to multiply, distribute, perform or broadcast), but also protection against disturbances from third parties.
III. Protection of computer programmes
Computer programmes "as such" are excluded from patent protection according to section 1, paragraph 2 sub-paragraph 3 of the PatG. Nevertheless, as language works they are eligible for copyright pursuant to section 2 paragraph 1 sup-paragraph 1 of the UrhG. However, it is a precondition for this protection that there must be an individual achievement that significantly exceeds the abilities of an average programmer. This achievement must manifest itself in the composition of the programme (section 69a UrhG). Programmes that are already part of the technological knowledge among experts, however, do not qualify for such protection. The same also applies for the scientific content of the programme, in particular the algorithm.
Programme related inventions that use a computer programme to solve a problem, however, are technical, and, provided they are new and inventive, are patentable if they concern the functionality of the data processing equipment as such, and thereby enable the direct interaction of its elements, if they describe a particular design of data processing equipment in the sense of technical implementation, if they open up new possible applications for purposes other than the purposes hitherto given, if the programme enables a new, inventive purpose of data processing equipment which is already known in its elements and construction, when the forces of nature and non-technical functions employed are in such close relation to one another that a technical effect can be achieved without the need for human intellectual interaction.
It is important, that the invention must be mainly technical in substance, where the object of the invention is to be judged as a whole, i.e. with all technical and non-technical features that are part of the solution. Moreover, changes of the hardware are also open to patent protection.
In the case of computer programmes it is particularly sections 69 a and following of the UrhG that apply. In law, the employer is entitled to all proprietary entitlements to computer programmes that were created by an employee in the due course of his employment or as a result of instructions of the employer.
Impressum:
Publisher: Humboldt-Universität zu Berlin
Editorial Department: Division for Research Matters, Dr Brigitte Lehmann