Patents & Intellectual Property FAQ on Inventions & Patents

What is intellectual property and what are property rights?

Intellectual property includes all creations of the human intellect. These can be protected in a legally binding manner. The property rights are protected and enforceable by e.g. patent, utility model, copyright or kept confidential as secret know-how.

Distinction discovery vs invention!

Observations and descriptions from the world of biology, mathematics, physics or chemistry are discoveries. They thus make accessible and obvious what is already present in nature and was previously merely hidden. As a rule, no commercial protection can be gained on it. In contrast, an invention provides a solution to a technical problem. It is purpose-oriented and commercially exploitable.

What are the requirements for a successful patent application?

Three essential criteria must be met. (1) The development must be new and not known or prior art. (2) The invention must be commercially and industrially exploitable. (3) There must be a certain level of inventiveness, i.e. the innovation must not be obvious e.g. for an expert. Often, the fulfillment of these three aspects is not entirely clear. With the support of patent exploitation agencies and patent attorneys, we can expertly evaluate inventions and draft a customized patent application.

Who evaluates patentability?

The novelty, inventive step and exploitation prospects of an invention are evaluated by ScienceValue Heidelberg (SVH) GmbH. SVH is a 100% subsidiary of the university and accompanies the inventions of the university from the initial evaluation to the exploitation with its experienced employees who are well connected in the industry. During these processes, SVH keeps close contact with the inventors.

Who is an inventor?

Any person who has made a creative contribution to the solution of the inventive problem is a co-inventor. In contrast, a necessary but purely mechanical activity that has contributed to the solution is not a creative contribution (e.g. taking measurements). Also an activity according to clear instructions of others is not creative (e.g. evaluation according to certain given criteria). Whenever own creativity has been incorporated into the technical solution, inventorship is given. In addition, if there are several inventors, the contribution to the solution may differ in value. The respective percentage share is determined by the inventors among themselves and this information is passed on to us on the invention disclosure form.

What must be considered when publishing data?

Basic rule - first the patent application, then the publication. The invention should also not have been published as a poster, abstract, thesis or lecture. This is because criterion (1) for a patent application is no longer fulfilled by any prior publication, i.e. the idea of novelty. Everything that is published is considered prior art. Once the patent application is filed, protection exists and it can be published. However, there are solutions when a publication must/should occur anyway in due time.

In the case of posters, abstracts or lectures, the essence of the invention cannot be said / presented and only the results can be reported. Here we are happy to advise you. In the case of high-ranking publications, such procedure is rather not possible. In this case, it is important to run the publication process in parallel with the patent application process at an early stage. At the beginning of the work on the manuscript, an invention disclosure should then also be completed. As a rule, the process from evaluation to decision to patent application takes 4-6 months, so this can usually be easily reconciled with the publication process. In urgent cases, the process of evaluation decision and patent application can also be faster (1-2 months), but then at increased cost to the external service providers such as patent attorneys.

Who bears the costs of the patent procedure?

All costs of the patent procedure - patent attorney, official fees - are borne by the university as your employer. For the priority application, these costs are around 6,000 - 8,000 €. Further costs arise in the following years: Year 1 approx. another 6,000 - 8,000 €, Year 2 and 3 approx. another 12,000 - 15,000 €. Ideally, these expenses are compensated when the patent is exploited (sale, licensing, spin-off).

Can software be patented?

In principle, software is subject to copyright. Patenting is only possible and reasonable in special cases. This can be the case if, for example, a technical process is controlled with the software (optimized data storage, brake control in passenger cars). A decision is strongly case-dependent and will be openly discussed with you during the evaluation process of your invention.

What is a license agreement?

Rights of use are granted via license agreements. If companies are interested in using a patented technology or copyright-protected material from Heidelberg University, a license agreement is negotiated that defines the scope of the company's use and the consideration for it. This states, for example, whether the use is exclusive and whether and how much revenue-based royalties the university will receive.

How do you profit as an inventor?

The university, as the owner of the patent, attempts to achieve exploitation through a patent sale or through out-licensing of the technology. In accordance with legal regulations (ArbEG), 30% of the resulting exploitation income is paid out to the inventor team. The remaining revenues, the university invests in further research and technology transfer.