IP strategy of the University of Münster

Preamble and objectives

A university’s utilisation of IP (intellectual property) serves first and foremost the specified objectives in ‘Research, Teaching and Transfer’. One of these is to disseminate knowledge, methods and specific technologies from science and bring them to the market to utilise them, thereby significantly advancing innovation in the economy and creating innovative products and jobs. In addition to promoting research collaborations and contracts with industry, such transfer also involves promoting academic spin-offs and the supportive use of patents, licences and know-how agreements. Pure commercial exploitability is therefore only one of several possible aspects that justify utilising an invention.

In line with the University of Münster’s above-mentioned goal of disseminating scientific technologies and bringing them to the market for utilisation, the preferred exploitation strategy is to license patents rather than to sell them. This is the only way to ensure that a technology does not disappear in the proverbial ‘drawer’. This also generally applies to the licensing of patents for University-derived spin-offs.

To allow the possibility for future experimentation, the University of Münster’s licensing policy provides for a variety of licencing models such as open access, public domain release (keyword ‘public domain’), patent pools and participation in open-source innovation. In the field of medicine, the University generally seeks to conclude agreements based on the ‘equitable licencing’ model.

Patents are an additional performance criterion for researchers, especially if they are exploited, which, with the aspect of the fruitfulness of research, represents a supplement to the performance criterion of publication. [...]

The IP strategy consists of a series of measures that create transparent and reliable decision-making paths for patenting and utilisation. At the same time, it provides leeway for necessary flexibility and complies with the principles laid down in the University of Münster’s ethics guidelines.

Below you will find a short version of the University of Münster’s patent strategy, categorised according to various focal points. For more details, please refer to the long version [de] (intranet).

  • I. Measures to optimise the patenting procedure

    1. Criteria for laying claim to an invention through the University of Münster.

    The procedure for laying claim to an invention adheres to a fixed catalogue of relatively flexible decision criteria. As a rule, the University of Münster follows the recommendations of the patent marketing agency PROvendis GmbH. It lays claim to inventions on behalf of its members if at least one of the following criteria is met:

    1.  the University is contractually obliged to lay claim and, if necessary, transfer rights to the invention,
    2.  the invention is commercially exploitable, and there are no ethical objections to its utilisation (generally depending on the nature of the invention),
    3.  the invention as such is promising, but still too far from market introduction to be exploited, and a target agreement regarding further exploitation could be reached with the inventor,
    4.  the invention is not yet commercially exploitable, but one can expect further inventions to follow which will make it possible to build up a patent portfolio or a patent family in this area which will be marketable as a whole at a later date, and additionally, a target agreement regarding further commercialisation could be reached with the inventor,
    5.  although the invention is not commercially exploitable, it is essential for the acquisition or extension of third-party funded projects, and additionally, a target agreement has been reached with the inventor regarding the prompt acquisition of specific third-party funded projects,
    6.  although the invention cannot (yet) be commercialised, it is important for the international visibility of the University,
    7.  although the invention cannot be commercialised, it is important for the individual scientist,
    8.  the invention is of social relevance and should be utilised in the sense of generating ‘social impact’,
    9.  the invention may be commercially exploitable, the inventor is aiming to create a spin-off, and a target agreement on the specific spin-off can be concluded with them.

    2. Criteria for exiting the patent process (exit strategy)

    The decision to exit the patent process adheres to a step-by-step procedure depending on the level of application and costs in accordance with the PROvendis’s list of measures and its catalogue of relatively flexible decision criteria on a case-by-case basis and differentiated according to specialist areas, as well as any rules laid down in potentially concluded target agreements.

  •  II. Measures to create an IP-friendly climate

    1. Training and information programmes for University members

    The Innovation Office (AFO) provides regular information about training and info events offered by the patent marketing agency PROvendis GmbH for members of the University of Münster, e.g. general information on commercial property rights and copyright laws.

    2. Intensive and individualised assistance and support for inventors (e.g. via patent consultants/on-site service) in the patenting phase

    The University’s patent officers at the Innovation Office are highly competent and well-trained. They are available to answer questions, visit the inventors if necessary and support them throughout the patenting process.

    3. Processing the invention disclosure as quickly as possible at the University and with PROvendis

    4. Setting performance incentives for researchers and working groups

    The University recommends that its faculties offer appropriate performance incentives for researchers and working groups. Possible incentives include:

    • financial compensation from the faculty budget for additional work performed
    • teaching load reductions
    • attaching same value to patent applications as to publications
    • research sabbaticals to further develop an invention
    • additional staff

    5. Strengthening the invention potential of independent inventors

    In addition to its own employees, the University of Münster also offers ‘independent inventors’ in its academic environment (students, scholarship holders, visiting academics, emeriti etc.) the opportunity to utilise their inventions under the same conditions as University staff if they transfer their rights to their inventions to the University of Münster.

    In the case of visiting academics and scholarship holders, the transferral of potential utilisation rights is included in their contracts. The inventor’s remuneration for this group is also contractually regulated based on provisions analogous to § 42 Employee Inventions Act [ArbnErfG].

  • III. Measures to increase the patent volume

    1. Utilisation of purely strategic patents

    A patent can be strategically valuable for the University even without directly commercialising it.

    The Rectorate is responsible for determining the strategically important core areas of the University. To identify the strategic areas, the Research Council in cooperation with the deans of faculty submits a recommendation to the Rectorate once a year. Once such a strategic research area has been identified for the patent area, it should be maintained as such for at least three to five years.

    2. Regular legal clarification

    All newly appointed professors are advised by the Research Department (Dept. 6.2) on the legal situation for University inventors. The legal advisors of the Research Department can visit the faculties or institutes if necessary.

    Newly appointed university professors are provided with an information flyer on ‘hazard training’ concerning their rights and obligations with regard to inventions.

    Together with the patent officers, the legal advisors hold meetings at which University instructors can learn more about the importance and purpose of patenting measures and the patenting process.

    3. Protecting the University’s own expertise with properly drafted third-party funding contracts and effective contract controlling, as well as applying a differentiated approach to authorising secondary employment

    The legal advisors of the Research Department will not approve contracts that allow transferral of rights to inventions without compensation. This is because the University would face substantial penalties from the EU as such clauses would restrict free research and teaching to an intolerable degree. In the event of an imminent outflow of know-how in the form of patents and/or IP, the HR department may only authorise secondary employment if an additional agreement is concluded between the client, the University instructor and the University, which grants the University prioritised access to at least ‘core patents’ and only allows the instructor to be bound to a client to a limited extent and with the right to terminate at any time.

    In order to prevent individual University instructors from being bound to multiple third-party funding providers with differing objectives, Dept. 6.2 (Legal department, Research department) is working on creating a centralised contract controlling system for third-party funding contracts.

  • IV. Measures for increasing transfer success

    1. Further development of in-house IP/inventions

    The patent officers at the University of Münster regularly inform prospective inventors about programmes that promote further research for transfer purposes. In the case of particularly promising or strategically important inventions, the University can significantly increase the potential to utilise them with targeted support and at the same time, create incentives for the inventors to continue working on their projects. However, due to limited funding, such measures can only be taken for particularly promising or scientifically interesting inventions and must be submitted for approval by the Rectorate on a case-by-case basis.

    2. Regular information through application support

    The application support service of the SAFIR Research Funding Support office holds regular info events and workshops to share the latest information about existing and new funding programmes, including transfer funding. When SAFIR advises candidates applying for project funding from public funding providers, it points out the possibility of obtaining funding in advance (if applicable) for any patents that may result.

    3. Targeted support for start-ups

    The University’s REACH - EUREGIO Start-up Center bundles all training and support services offered by the University of Münster, state, city and chambers of commerce for those wishing to set up a business and provides comprehensive advice, including on funding programmes (EXIST, GoBIO etc.). The aim is to establish a culture of entrepreneurial independence (also among students). The University of Münster provides its own staff with rooms or rental space for an ‘incubation period’ for spin-offs, as well as offers professional coaching. Dept. 6.2 is available to answer any questions you might have with regard to licensing, patent purchasing agreements or know-how contracts, whereby the University always prioritises licensing over selling patents.

    4. Patent monitoring measures

    At the end of a five-year period, the measures implemented are evaluated. In addition to determining the IP costs incurred, it should be clear at this point whether this strategy has contributed to significantly increasing the number of IP applications and grants, patent quality, commercialisation revenues and the amount of third-party funding acquired by industrial partners at the University. However, non-monetary criteria should also be included in the evaluation, e.g. the number of products successfully brought to market, the number of spin-offs and the composition of the patent portfolio that may have since been created.

    With respect to patents granted to the University, the inventors themselves are most ideally positioned to monitor patent infringement. Any discovered cases of patent infringement should be reported immediately to the administration. The University of Münster will then decide on a case-by-case basis on how to defend its rights and those of its inventors.