University-specific FAQs

1. I’ve created an invention. What do I have to do?
According to the Employee Inventions Act [ArbnErfG], employees are obliged to report their inventions to their employer – in this case, the University of Münster. Here at the University of Münster, you can obtain advice and support on the subject of ‘invention disclosure’ from our patent officers (Katarina Kühn, tel: +49 251 83-32223, email: katarina.kuehn@uni-muenster.de and Janita Tönnissen, tel: +49 251-83 32942, email: janita.toennissen@uni-muenster.de). In a personal meeting, you can describe your invention to us so that we can assess its patentability. Whatever you do, do not publicise your invention before filing a patent application or until the University has granted permission to publicise it.

2. What is an invention disclosure, and where can I find the form?
With the invention disclosure, you formally inform the University that you have created an invention, whereby you describe your invention in detail: the technical problem, the solution and the advantages over the state of the art or current technology. You should also describe the context in which the invention arose (e.g. in a third-party funded project). It is particularly important to ensure that all inventors are named (including external ones). The form is sent to you by email on request by our patent officers. You can also find it on the AFO website under ‘Invention disclosure’.

3. Who should I send the invention disclosure form to?
The complete invention disclosure, signed by all inventors, should be sent in a sealed envelope to Dr Steinberg, Dept. 6, Schlossplatz 2, 48149 Münster, Germany, or handed in personally. If for some reason this isn’t possible, please discuss an alternative procedure with the patent officers.

4. What happens after the invention disclosure is submitted?
The inventor is sent written confirmation that the invention disclosure was received. The invention disclosure is then formally reviewed with respect to completeness and third-party rights. The invention disclosure is forwarded to PROvendis GmbH which assesses the invention’s patentability and usability. After receiving the statement from PROvendis, the University decides whether to utilise the invention or waive its claim. The inventor is informed of this decision in writing.
If the University wishes to claim the invention, a patent application procedure is initiated.

5. What do “claim” and “waive” mean, and who decides?
In the case of a claim, the employer decides to utilise the employee’s invention. This must be done by means of a written declaration of intent, which is sent to the employee. Upon receipt of the declaration, all rights to the invention are transferred to the employer. A claim obliges the employer to apply for a patent for the invention immediately, valid at least in Germany at its own expense and in its own name. If rights to the invention are waived by the employer, the employee is free to decide whether to protect the invention at their own expense and in their own name and/or publish the research results.
The decision to claim or waive is made by Dept. 6.

6. Who is responsible for assessing the invention?
As a rule, all University inventions are assessed by the patent marketing agency PROvendis GmbH. The University is then informed of the results in a statement.

7. What does the process look like from invention to patent application?
If you have any questions concerning how to complete and submit the invention disclosure, please contact our patent officers (Katarina Kühn, tel: +49 251 83-32223, email: katarina.kuehn@uni-muenster.de and Janita Tönnissen, tel: +49 251 83-32942, email: janita.toennissen@uni-muenster.de). The invention disclosure form must be submitted in writing to Dr Steinberg, Schlossplatz 2, 48149 Münster, in Dept. 6. After a preliminary review by Dept. 6, the invention is assessed by PROvendis GmbH. After receiving the opinion of PROvendis, the University decides whether to claim the invention as its own or waive its claim. If the University decides to claim the invention, it immediately initiates a patent application. The entire process is conducted in close coordination between the inventor, the University, PROvendis and a patent attorney. You can find a summary of the patent process plan on the AFO webpage “Invention disclosure”.

8. What is PROvendis, and what does it do?
The patent marketing agency PROvendis GmbH is a subsidiary of the universities of North Rhine-Westphalia. The scientists and engineers employed by PROvendis as innovation managers assess university inventions for patentability and commercial viability. They provide support with patenting, look for potential commercialisation partners and negotiate contractual terms with companies. PROvendis’ legal advisors also counsel universities on all legal protection matters.

9. What criteria are used to assess the invention?
The patent marketing agency PROvendis GmbH assesses an invention based on the criteria of patentability (novelty, inventive step, industrial applicability), feasibility and/or degree of maturity and commercial exploitability.

10. How long does the patent application process take?
The process takes approximately three to six months beginning with the receipt of the complete invention disclosure at the University, followed by the assessment and the preparation of the patent specification to the confirmation of receipt from the German Patent Office. However, the process can go faster depending on the respective situation and the data material already available. Preparatory work, such as compiling experimental data and illustrations or conducting your own initial research into the state of the art and having potentially interested companies in mind, can speed up the process considerably.

11. What deadlines must I observe as an inventor? Should or must I act quickly?
University employees must report inventions to the University immediately (§ 5 ArbnErfG). After receipt of the invention disclosure by the University, inventors are not allowed to publicise their invention for two months: Therefore, if a publication is planned, you should disclose your invention well in advance. The decisive factor is that the earlier you disclose the invention, the sooner we (or you) can apply for a patent and secure rights to the invention.

12. What must I consider if a student is a co-inventor?
Students are not employees of the University and therefore, are not covered by the Employee Inventions Act [ArbnErfG]. However, the University and students can enter an agreement on transferring their shares of the invention to the University with appropriate remuneration paid to the students in line with the Employee Inventions Act. For more information, please consult the AFO webpage ‘Invention disclosure’.

13. Can visiting researchers be regarded as inventors employed by the University?
In principle, yes, as long as they work under contract for the University. However, should no employment contract exist between the visiting researcher and the host university, they are deemed to be independent inventors.

14. I’d like to publish something on my invention as soon as possible. When can I do that?
According to the Employee Inventions Act [ArbnErfG], you may publicise your invention no earlier than two months after the University receives the invention disclosure. However, if the content of the planned publication merits or requires patent protection, you may not go ahead with publication until the content is duly protected. Patent protection only exists upon receipt of the application by the German Patent Office. The content may not be publicised beforehand, as an invention is no longer considered novel if its details have been previously disclosed in public. Consequently, premature publication would render your invention ineligible for a patent.

15. What do I have to pay attention to so as not to jeopardise my chances of getting the invention patented?
Inventions may not be made accessible to the public in any way before the date of application. Anyone who is involved with or has knowledge of the invention must be sworn to secrecy.

16. What are the advantages of patent registration by the University, and how much do inventors at universities stand to earn from commercialisation proceeds?
In the event the University wishes to claim the rights to your invention, it will apply for a patent at its own expense and pursue the best possible exploitation of the invention. The university inventors are not liable for any resulting costs and are entitled to 30% of the gross proceeds resulting from the invention’s exploitation.

17. Do I receive remuneration, and how much is it?
If your invention is successfully commercialised, the University is legally obliged to pay an ‘inventor's remuneration’. In accordance with § 42 (4) Employee Inventions Act [ArbnErfG], inventors or the inventor community are entitled to 30% of the gross revenues (i.e. before deducting the patenting costs) generated from exploiting the invention through licensing or sale. In comparison, inventors in the private sector are usually paid remuneration at a significantly lower rate of around one to three percent.

18. Do inventors incur costs as a result of an IP application and utilisation?
If you disclose your invention to the University of Münster, and we make use of it, the University will bear all the costs of filing an IP application and pursuing its subsequent exploitation. You as the inventor do not incur or are liable for any costs.

19. My invention was created in a third-party funded project. What do I have to consider?
An invention disclosure must be completed and submitted to the University even if the invention was created as part of a third-party funded project. In this case, please enclose the relevant cooperation agreement between you and the project partner(s) together with your invention disclosure or indicate the project in which the invention was created (project partners, funding reference number, funding providers). The University will then review all contractual regulations and proceed accordingly.