You should know
According to the Employee Invention Act, all employees are obliged to report their invention to their employer - i.e. the university. Advice and support on the subject of "reporting inventions" is available from the CET. If you have any legal questions, you can contact the office of the Patent Commission in the Department of Finance and Procurement. In any case, make sure that you do not publish your invention - not even in parts - before the invention has been filed for a patent or officially released to you by the university.
With the invention disclosure, you formally inform the university about the invention you have made and describe it in detail: the technical problem, the solution method and the advantages over the state of the art. Furthermore, you should describe the context in which the invention was made (e.g. in a third-party funded project). It is also mandatory to name all inventors (including external ones).
The complete invention disclosure, signed by the entire inventor team, should be sent in a sealed envelope to the Patent Commission's office or delivered there in person (see address in the invention disclosure). If, in exceptional cases, this is not possible, please discuss an alternative procedure with the office. (In exceptional cases, it is also possible to send the application in encrypted form by e-mail; please agree on an appropriate encryption method in advance).
The receipt of the invention will be confirmed in writing, then the invention will be formally checked for completeness and third party rights. If no other contractual arrangements exist, the invention is forwarded to Provendis GmbH for examination of patentability and exploitability. After receiving the statement of Provendis and a recommendation for action by the CET, the university decides whether to claim or to release the invention. You will be informed of this decision in writing. In the event of a claim, a patent application will generally be initiated.
In the event of a claim, the employer shall claim the service invention of its employees. The claim may be made by means of a written declaration. Upon receipt of the declaration, all rights to the service invention shall pass to the employer. The claim is automatically deemed declared four months after receipt of the declaration. A claim obliges the employer to apply for a patent for the service invention immediately and at least in Germany at his own expense and in his own name.
If the employer releases the invention, you are free to decide whether to protect your invention at your own expense and in your own name or to disclose the research results to the public. The decision on claiming or releasing is made by the patent commission of the university.
All university inventions are generally evaluated by the patent exploitation agency Provendis GmbH. The result is communicated to the university in a statement. Subsequently, a further recommendation for action is made by the CET to the office of the Patent Commission.
The first point of contact for inventors is the contact person at the CET. An invention disclosure must be made in writing using the appropriate form. After a formal examination by the Patent Commission's office in the Procurement and Finance Department, an evaluation is carried out by our service provider, Provendis GmbH.
After receipt of the opinion from our service provider and the CET's recommendation for action, the TU Dortmund University decides whether to claim or release the invention. In case of a claim, a patent application is initiated, unless contractual regulations provide for a different procedure. The entire process takes place in close coordination between the inventor, the university, Provendis and the patent attorney.
The patent exploitation agency Provendis GmbH is a subsidiary of the NRW universities. The natural scientists and engineers employed by Provendis GmbH as innovation managers evaluate university inventions for patentability and commercial exploitability. They provide support in patenting, search for exploitation partners and assist in contract negotiations with companies. Furthermore, the legal and patent attorneys at Provendis advise universities in legal protection matters, if required.
The patent exploitation agency Provendis GmbH evaluates an invention according to the following criteria: Patentability (novelty, inventive step, industrial applicability), practicability or degree of maturity and economic exploitability.
From the receipt of the complete invention disclosure by the university, through the evaluation process, the preparation of the patent specification, to the confirmation of receipt by the patent office, approximately three to six months pass. This process can be accelerated, but it depends heavily on the particular situation and the data material already available. Preliminary work such as compilations of experimental data and figures or own initial prior art searches as well as knowledge about potentially interested companies accelerate the time schedule considerably.
University employees must report their inventions to the university without delay (Section 5 ArbEG). After receipt of the invention disclosure by the university, the invention may not be published for four months; this period is reduced to two months in certain cases. Therefore, if publication is planned, timely notification of the invention is required. The earlier the notification is made, the earlier a patent can be applied for and the invention can be protected.
Students without a SHK contract are not employees of the university and therefore do not fall under the Employee Inventions Act. However, after reporting an invention, the university and the students can agree that the shares of the invention are transferred to the university and that the students are treated as employees within the meaning of the Employee Inventions Act and are thus also remunerated in the event of exploitation.
In principle, yes, as soon as a contractual relationship with the university exists. Without a contract of employment, visiting researchers are considered to be free inventors or service inventors of the home institution.
According to the Employee Invention Act, you may publish your invention no earlier than two months after receipt of the invention disclosure by the university. However, if the contents of the planned publication should/must be protected by a patent, they must be protected under patent law before publication. Patent protection does not exist until the application is received. Prior to this, these contents may not be made available to the public, since in the case of a prior publication, an invention is no longer considered new and thus a patent application can no longer be filed.
Inventions must not be made available to the public in any way prior to the date of application. The persons with whom the invention is communicated in advance must be bound to secrecy.
In principle, university employees are required by law to report the invention to the university before it is disclosed. In the event of a claim, the university will apply for a patent for the invention at its own expense or ensure that contractual provisions from contracts with third parties are fulfilled, as well as pursue the exploitation of the invention in the best possible way. The university inventors will not incur any costs in this regard.
In the event of successful exploitation of a service invention, the university is legally obliged to pay an inventor's compensation. Pursuant to Section 42 (4), the inventor or the inventor community is entitled to 30 percent of the gross exploitation income generated (licensing or sale). In the private sector, the financial participation of inventors is usually much lower, at one to three percent.
If you report an invention to the university and the university claims your invention, the university bears all costs for IP applications and a subsequent exploitation.
An invention disclosure must also be completed and submitted to the university as part of a third-party funded project. In this case, please attach the corresponding cooperation agreement between you and the project partner to your invention disclosure or indicate in which project the invention arose (funding code or WBS element). The university will then check all contractual regulations and will proceed accordingly.