The most common mistakes when patenting inventions
Inventions must meet a number of criteria in order for the process to result in the grant of a patent or industrial property right that can actually be exploited. Below, we outline the most common mistakes and misunderstandings that we repeatedly observe in our practice at TUGZ@OVGU.
1. Publication of the invention prior to filing the patent application
If the content of an invention is published before the date of the patent application, the grant of a patent is ruled out from that point onwards. The essential element of novelty is missing. Even if only some (important) features of the invention are published, the grant of a patent may fail; namely, if the invention can be reproduced in an obvious manner by a person skilled in the art on the basis of the published features, the element of inventive step is lacking.
The term "publication" is broadly defined. It includes not only a traditional scientific publication, but also a poster presentation at a conference attended by perhaps only two participants. Conversations with "close friends" or colleagues should be avoided, as should conversations in public spaces, such as on a train or aeroplane, where third parties may overhear.
Even entering the idea into web services such as Google Translate (because you simply want to translate the idea quickly) is sufficient to constitute prior publication and thus make patenting impossible.
Even non-disclosure agreements offer no absolute protection regarding the issue of prior publication. Please always wait until the invention has been filed for a patent (cut-off date "priority date") before approaching third parties with it. Otherwise, your own prior publication will preclude patent protection.
For a publication to be considered a valid prior art, it must be accessible to the public, for example as a Bachelor’s thesis, Master's thesis or dissertation available in a library.
2. The rights to the invention are not clearly defined
Only those persons who have made a relevant contribution to the invention should be named as inventors – but in return, all persons who have made contributions must be listed. It should be noted here that one would not be supporting one’s colleagues and staff by listing them on a patent specification, even if they have not made any significant contributions. Similarly, it is a serious mistake to omit contributors from the invention disclosure simply because they were "only" students or student assistants. The list of those involved in the invention must be provided in full.
Students without an employment contract with OVGU are generally to be regarded as independent inventors who, through the assignment of rights, can be treated on a par with employed inventors. Research assistants, on the other hand, are not independent inventors, as they have a contractual relationship (employment relationship) with OVGU.
In particular, where the invention was made within the framework of a traditional third-party funded project, the rights of partners outside OVGU must also be taken into account. For instance, a third-party funding agreement for a project may already stipulate in advance how inventions are to be handled; this must be checked without fail and also stated fully and unambiguously in the invention disclosure form.
It should also be noted that once all inventors have signed the invention disclosure form, the allocations specified therein (percentage share in the invention and thus also the subsequent distribution of the employee invention remuneration) are irrevocably fixed. Subsequent negotiations with TUGZ@OVGU to take something away from one or more members of the invention team or to add to their share will not be successful.
If, within the relevant statutory time limits, no consensus is reached within the inventors’ group – which may, for example, include one or more external partners – regarding the framework conditions for rights and shares in the invention, the OVGU will assume a joint ownership arrangement under the German Civil Code (BGB) for its employee inventors and, if necessary, perform a registration even without consensus with the external partner.
3. Failure to conduct searches prior to the invention disclosure
The three key criteria for patents are (1) novelty, (2) inventive step, and (3) industrial applicability. Before submitting an invention disclosure, it should therefore always be checked whether the disclosure actually describes an invention, i.e. something "new%$. The novelty check can be carried out either through your own research or by the professional team at the Patent Information Centre (PIZ) at the UB@OVGU. Information on the PIZ’s research options and processes can be found here. Trademarks and designs should also be carefully researched before registration.
Experience shows that only around 50% of patent applications are actually granted, i.e. the patent is registered. Often, examiners at the patent offices find that essential features of the invention are neither new nor involve an inventive step, or that at least one of these features is missing. Researchers have years of professional experience in conducting searches, for example in patent databases. "State of the art" is everything that has ever been made available to the public, in any way and anywhere. Even publication on a website or in an internet forum post, or the use of Google Translate, constitutes publication, even if it was a one-off or was only online briefly. What was once state of the art remains state of the art forever.
4. Lack of commercial viability or exploitation opportunities
Inventions and patents do not sell themselves. It requires a great deal of effort, time and energy to bring an invention to market and ultimately make money from it. Getting companies excited about further developing untested and potentially risky ideas, and persuading them to invest their own money in these new ideas, is a difficult undertaking. Sometimes inventors also overestimate the market for their ideas and overlook competing products with similar features.
Often, inventions are still at an early stage and do not meet the expectations of potential commercialisation partners regarding (technical) maturity. Experience shows that an invention can only be commercialised successfully once prototypes or experimental data are available at a minimum TRL (technology readiness level) of 6.
5. Lack of a patenting strategy
Patenting strategies that do not fit with commercial implementation or the business models of IP-based spin-offs are only sensible in certain cases; for example, where publication is intended to establish a prior art that slows down the competition.
If, for example, relevant countries or territories are omitted from the patenting process, an invention or patent family may quickly lose its appeal to a licensee or start-up because sales in these markets are subject to (price) competition. Conversely, if too many countries are selected, costs can quickly mount up, significantly exceeding the available budget. The patenting strategies for OVGU inventions are assessed by the IP Board and proposed to the University Management for a decision. This committee of experts on IP matters at OVGU reviews proposals for nationalisation as well as exploitation strategies, issues recommendations, and thereby also supports the inventors and TUGZ@OVGU.
6. Important deadlines
Inventions which are not utilised by OVGU as an employer and/or which are released in full or in part (for specific regions and countries) may be freely exploited by the inventors within this explicitly released scope. The registration and maintenance of industrial property rights in such cases are the sole responsibility of the inventors at their own expense and risk.
For free/released inventions, the inventors are therefore themselves responsible for managing deadlines. If important deadlines are missed, the opportunity to extend protection to other countries or territories may, for example, lapse, or, in the worst case, patent protection may irrevocably lapse. It is therefore strongly recommended that registrations and deadline monitoring be carried out by professional patent law firms and that, as an independent inventor, you do not act on your own without the support of qualified third parties.