Guide to Filing an Invention Disclosure
The Employee Inventions Act (ArbErfG) expressly stipulates that, for the sake of legal certainty, an invention must be reported to the employer in writing. This means that any invention created during the course of an employment relationship must be reported to OVGU in full and without delay in writing (sections 5 and 18 of the ArbErfG). It is strongly recommended that the invention disclosure form be used. The employee must be notified immediately upon receipt of the invention disclosure (Section 5 ArbErfG). The yellow-highlighted area on the top right of the first page of the invention disclosure form is intended to clearly highlight important deadlines relating to the invention disclosure.
In the case of inventors who are employed by or hold a civil service position at OVGU, the question of who is actually entitled to the economic rights to the invention must first be clarified before any application for intellectual property rights is filed. Under the Employee Inventions Act, the employer OVGU is generally entitled to inventions that the employee has completed during the term of the employment relationship. Depending on the individual circumstances queried in the form, this constitutes a service invention (Section 4 ArbErfG), which may be claimed by the employer OVGU (Section 6 ArbErfG).
Employee invention or independent invention?
The Employee Inventions Act distinguishes between two types of employee inventions, namely service inventions and independent inventions (Section 4 ArbErfG).
Service inventions are inventions made by the employee during the term of the employment relationship and which arose from the employee’s work; for example, through work in the laboratory or during work meetings. This also includes inventions based on experience or work at university. It is irrelevant where or when (such as at the weekend or ‘after working hours’) the invention was made or the inventive solution conceived. Even the frequently cited argument “But my boss didn’t actually assign me the task of making a new invention” does not exempt the employee from the obligation to report the invention.
All inventions by employees that do not constitute service inventions are free inventions. Free inventions cannot be claimed by the employer, OVGU. However, free inventions must be reported to OVGU (Section 18 ArbErfG). On the basis of this notification, OVGU must be able to assess whether the invention is free. Should the OVGU be of the opinion that the invention is not a free invention, it must notify the inventor of this within three months. If the free invention overlaps with the institute’s existing or planned field of work, the employee is also obliged to offer the institute joint use of the invention (Section 19 ArbErfG).
The invention declaration
An invention declaration must be made and must in all cases be in writing in order to establish clear terms regarding scope and deadlines (Section 5 ArbErfG). In the invention declaration, the employee must describe the problem and solution as well as the development of the employee invention. It is also important to state whether the invention or parts thereof are to be published shortly for urgent reasons (e.g. conferences, seminars, publications, reports). In such cases, special agreements must be made in advance to ensure that potential patenting is not rendered impossible. In principle, the employee should report a service invention to the OVGU two months prior to a planned publication (Section 42(1) ArbnErfG).
If the notification does not describe and explain the invention or its development with sufficient precision, the employer may object to the notification within a period of two months (Section 5 of the ArbnErfG). In the event of objections, the deadline for claiming rights is extended accordingly.
Description of the invention
Your employer (as a so-called non-specialist) must be enabled, by the information in the invention notification, to assess whether it is in fact a service invention and, if so, whether they wish to claim it. The employer must make this decision no later than four months after receipt of the proper invention notification (Section 6 of the German Employee Inventions Act). If the OVGU does not expressly state its position, the invention is automatically deemed to have been claimed after four months have elapsed (Section 6(2) ArbErfG).
In assessing the patentability of an invention, it is crucial to know whether parts of the invention have already been made available to the public at some point, somewhere, in any way—whether in writing, orally or through use (Section 3 PatG). In the academic sector in particular, there are often still gaps in information regarding this. Upon filing the invention disclosure, inventors are bound to maintain confidentiality until the OVGU approves the invention or until a patent registration is filed. Any prior publication, even ‘merely’ as a poster at a small conference, is deemed to destroy novelty and will in any case prevent the successful registration of a patent. It is therefore essential to ensure that written or other publications detrimental to patentability are avoided in advance. Please therefore contact Mr Thomas Voigt in good time; email: thomas.voigt@ovgu.de, tel.: 0391 67-52091, so as not to destroy exploitable know-how!
A comprehensive and complete description of the invention must be attached to the invention disclosure. The content should be structured into the technical problem and the technical solution, which are also integral parts of every patent application. You are obliged to provide comprehensive information on the state of the art and to attach known references and patent documents.
In your description, you should focus on the essential novelty of your invention. Please state why your invention in particular solves a technical problem or what advantages your invention has over previous developments. Lengthy unsuccessful preliminary experiments and an explanation of the scientific principles may be included as ancillary elements of the invention disclosure. Neither of these is central to a patent application, but they may help to explain the invention.
Please note: As the inventor, you are the ‘above-average skilled person’ – so describe your invention for an average skilled person! Avoid pages of theory on the fundamentals of the invention; do not describe why something works, but rather ‘what must be done to make it work’.
Joint invention / co-inventors
If several people are involved in the invention, it is sufficient to submit a joint invention disclosure using a single form. The form developed by the OVGU explicitly takes this into account. Additional inventors can be easily added using the relevant buttons. By consolidating all information into a single form, any inconsistent details are avoided. The percentage distribution of the individual inventors’ contributions to the invention is also definitively recorded here; this prevents subsequent discussions and, where applicable, disputes amongst the inventors.
The persons listed on the invention disclosure also confirm that no one other than the named persons is involved in the invention as an inventor. This information is required for the designation of inventors (§ 37 PatG), which must be submitted no later than fifteen months after the filing of the patent application. It is also essential for a joint patent registration or patent exploitation to identify any independent inventors involved or inventors from other institutions and companies and to include them in the process of registering the intellectual property right.
The persons to be named as inventors are those who have made a significant, inventive and independent contribution to the invention. Please ensure that you only include those persons in the list of inventors who have made such an independent contribution. There are known cases where successfully granted patents were subsequently revoked after competitors were able to prove that alleged inventors had not contributed to the invention.
Personal details
The invention disclosure form asks not only for your work address but also for your home address. The home address must be provided to the relevant patent office in the designation of inventors and will be published by the office together with the publication of the patent application. Furthermore, providing your home address is intended to ensure that you can be contacted throughout the duration of your employment with OVGU, for example in the case of PhD students. The exploitation process in particular can be protracted; it is important that the remuneration to which you are entitled can still reach you at a later date.
Contract or service invention
It must also be clarified whether the invention is a commissioned or an experience-based invention. Contracts or general terms and conditions may impose obligations on OVGU towards third-party funding bodies. All subsequent processes relating to the assertion of rights, registration and exploitation are fundamentally affected by this; the status of the matter must therefore be determined at a very early stage.
Claiming or releasing the employee invention
OVGU may claim the invention. This means that all property rights in the invention are transferred to the employer (Section 7 ArbErfG), and that the invention is registered as a patent in Germany at the employer’s expense or, if this appears appropriate, as a utility model instead (Section 13 ArbnErfG). The obligation to file an application only ceases to apply if the employer’s clear intention not to file an application for intellectual property rights is evident. We often engage patent agencies such as ESA PVA or external patent law firms, whose quality we know from many years of trusting cooperation.
OVGU has the right to apply for accepted inventions abroad as well. The inventors must be notified of this in good time. Should a registration for intellectual property rights be abandoned at any point, the inventors must be given the opportunity in good time to take over the registration themselves (Section 16 ArbErfG).
If the OVGU declares that it does not claim an invention, it becomes a free invention over which the inventors may freely dispose (§ 8 ArbErfG). Similarly, inventors may file foreign applications that have not been expressly claimed at their own expense (§ 14 ArbErfG).
Exploitation
Inventors may and should look for potential users of their invention at every stage of technical development and throughout the employee invention and patent law proceedings, provided that the content or nature of the invention is not disclosed in the process. Please contact the TUGZ at any time if you become aware of parties interested in your invention. If you wish to exploit the intellectual property rights yourself, for example by setting up your own company, the TUGZ will provide you with further support in this regard.
Further regulations and provisions
The Employee Inventions Act covers other important topics requiring regulation, such as the duty of confidentiality (Section 24 ArbErfG) or provisions regarding the termination of the employment relationship (Section 26 ArbErfG). It would go too far to elaborate on these provisions here. In individual cases, please feel free to contact us for a non-binding discussion.
There are extensive commentaries on employees’ inventions. In legal matters, many special cases, framework conditions and specific points are relevant. TUGZ@OVGU therefore accepts no liability for the completeness and accuracy of this brief guide, nor for any decisions made on the basis of this summary.