1. I have created an invention. What should I do now?
According to the Act on Employees' Inventions (Arbeitnehmererfindergesetz), all employees are obliged to report their inventions to their employer, which in your case is the University of Münster. For further advice and support on all matters related to patents and inventions, please contact our patent scout, Dr Katharina Krüger (tel. +49 251 83-32941, email: krueger.AFO@uni-muenster.de). She would be happy to arrange a personal meeting to give you an idea as to whether your invention is patentable. Please refrain from publicly announcing your invention until it is patented or until you have received approval to do so from the University.
2. What is an invention disclosure, and where can I find the disclosure form?
Submitting an invention disclosure is how you formally report your invention to the University. In this form, you are asked to describe your invention in detail: the technical problem, the solution, and the advantages to current technology. You are also asked to elaborate on the context in which the invention was created (e.g. as part of an externally funded project). Importantly, make sure to acknowledge all co-inventors of the invention (also those outside the University). You can receive the invention disclosure form upon request from our patent scout via email. The form is also available as a download from the WWU website:
3. Who should I send the invention disclosure to?
After completing the form and collecting the signatures of all co-inventors, you should send or personally deliver the invention disclosure form in a sealed envelope to Dr Katharina Steinberg, Dez. 6, Schlossplatz 2, 48149 Münster. If this is not possible, please contact our patent scout for an alternative arrangement.
4. What happens after I've submitted the invention disclosure?
After the invention disclosure arrives at our office, we send written confirmation of receipt to all respective inventors. Subsequently, the disclosure is formally reviewed to ensure that it is complete and does not infringe on the rights of others. It is then forwarded to PROvendis GmbH which evaluates the invention's patentability and usability. Upon receipt of the assessment by PROvendis, the University decides whether to claim or release its invention rights. The University notifies the inventors of its decision in writing.
Should the University choose to claim rights to the invention, it initiates the patent application process.
5. What does "claiming or releasing invention rights" mean and who decides on that?
With regard to claiming invention rights, the employer claims ownership of the service invention. The employee must be notified of this decision in the form of a written declaration. Upon delivery of this declaration, all rights to the service invention are transferred to the employer. By claiming its rights to the invention, the employer is obligated to immediately apply for at least a national patent (Germany) in its name and at its own expense.
Should the University decide to release its invention rights, the employee is free to decide whether to apply for a patent in his/her name and at his/her own expense, or whether to publicly announce his/her research findings.
The decision is made by Dept. 6 (Research Affairs) of the University of Münster.
6. Who is responsible for evaluating my invention?
All university inventions are sent to the patent utilisation agency PROvendis GmbH for evaluation. PROvendis issues a statement to the University with the results of its assessment.
7. What process does the University follow from an invention disclosure to a patent application?
If you have questions regarding invention disclosures, please contact our patent scout, Dr Katharina Krüger (tel. +49 251 83-32941, email: krueger.AFO@uni-muenster.de). Inventors must report their inventions by submitting an invention disclosure form, available at:
http://www.uni-muenster.de/AFO/patente/erfindungsmeldung/index.html, to Dr Katharina Steinberg, Dez. 6, Schlossplatz 2, 48148 Münster.
Following a preliminary review by Dept. 6, the invention is evaluated by PROvendis GmbH. Upon receiving the results of the assessment, the University makes a decision whether to claim or release its rights to the invention. If it claims its rights, it immediately takes steps to apply for a patent. The entire process is conducted in close cooperation with the inventor, the University, PROvendis GmbH and a patent attorney.
You can download a summary of the patenting process at:
8. Who is PROvendis and what do they do?
The patent utilisation agency PROvendis GmbH is a subsidiary of the universities of North Rhine-Westphalia. The innovation managers at PROvendis are scientists and engineers responsible for assessing the patentability and economic usability of university inventions. They support the patenting process, search for commercialisation partners, and conduct contractual negotiations with companies. PROvendis also employs attorneys specialised in intellectual property rights and patent law who consult the universities on all legal protection matters.
9. What criteria does PROvendis use for its assessment of the invention?
PROvendis GmbH assesses inventions on the basis of the following criteria: patentability (novelty, ingenuity, commercial applicability), viability or level of development, and economic usability.
10. How long does the patent application process take?
Upon receipt of the invention disclosure, the process can take anywhere from three to six months – which is the time it takes to assess the invention, apply for a patent and await confirmation of the application's receipt from the Patent Office. Sometimes the process proceeds faster depending on the circumstances and the availability of existing data. Inventors can substantially shorten the process by compiling experimental data and illustrations in advance, providing preliminary research on the state of technology and sharing knowledge about companies which could be interested in the invention.
11. What deadlines apply to inventors? Is it advisable or imperative that an inventor act quickly?
University employees are required by law to immediately report their inventions to the University (§ ArbEG). Furthermore, the inventor is not permitted to publicly announce his/her invention for two months after submitting the invention disclosure to the University. Therefore, if a publication is planned, you should take this non-disclosure period into account. The sooner you report your invention, the sooner it can be patented and your invention protected.
12. What if one of the co-inventors is a student? Do special rules apply?
Students are not employees of the University and, therefore, are not subject to the provisions of the Act on Employees' Inventions (Arbeitnehmererfindergesetz). However, the University and the student co-inventors can conclude an agreement which transfers their stake in the invention to the University and ensures that they receive royalties equivalent to those prescribed by the Act on Employees' Inventions.
13. Can visiting researchers/academics be service inventors of the University?
Generally speaking, yes, but only if they have established a contractual relationship with the University. If no employment contract exists between the visiting researcher and the host university, the visiting researcher is recognised as an independent inventor.
14. I'd like to publish something as soon as possible. When am I allowed to?
According to the Act on Employees' Inventions (Arbeitnehmererfindergesetz), you may not publicly announce your invention for two months following submission of the invention disclosure. To ensure that the content of your publication is protected by a patent, you will have to wait until the patenting process is completed. Your invention is protected as soon as the Patent Office receives the patent application. Prior to that, you must refrain from publicly announcing your invention. If you do, your invention will no longer be considered new and, therefore, will no longer be eligible for patent protection.
15. What should I do (or not do) so as not to jeopardise my chances of patenting my invention?
Under no circumstances should word leak out about your invention before it is officially reported through the submission of an invention disclosure. All persons who communicate about the invention prior to disclosure must be bound to secrecy (e.g. confidentiality agreement).
16. What is the benefit of having the University patent my invention, and to what extent are inventors at universities entitled to capitalisation revenues?
If the University decides to claim invention rights, it is obliged to bear the expenses for the patent and capitalise on the invention to the best of its ability. University inventors have no financial obligations and receive 30 % of the gross profits generated by the invention.
17. Am I entitled to compensation, and if so, how much?
If your service invention is successfully commercialised, the University is legally obligated to remunerate you as the inventor. In accordance with § 42 (4), the inventor, or inventor team, is entitled to 30 % of the gross utilisation revenues (from licensing or sales), i.e. before deduction of the patent fees. In the private sector, inventors are usually compensated with far less in comparison – between 1 and 3 % of the gross revenues.
18. As the inventor, do I have to pay for expenses resulting from the patent application or utilisation?
If the University decides to claim invention rights, it assumes full responsibility for all costs incurred from patent fees and subsequent utilisation. There are absolutely no costs for you as the inventor.
19. My invention was created in an externally funded project. What rules apply in such cases?
Even if your invention was created in an externally funded project, you are required to submit an invention disclosure to the University. In this case, however, please include the corresponding cooperation agreement between you and the project partner, or provide details about the project in which the invention was created (project partner(s), funding reference no., funding provider(s)). The University will then review all contractual agreements which exist in this context and proceed accordingly.