Have you devised a novel manufacturing process, developed a device, written software, described a new material or gene or improved an existing technology?
Then you have created something novel, or, in legal terms, generated intellectual property (IP). Whether and how this IP can be protected by patents or other legal means depends on several factors.
The following sections try to answer the most important questions. For all other questions please call or send us an email.
The term "intellectual property" refers to products of the human intellect (e.g. inventions, know-how, software). The term "commercial property rights" comprises all rights protecting intellectual property: patent and utility model rights with respect to inventions, copyright with respect to works of science, literature and the arts, including software.
If you trace or recognize previously unknown natural laws, connect effects, properties or occurrences that are already present in nature, then you have made a discovery. If, on the other hand, you have solved a specified problem by technical means, you have made an invention. There are, however, borderline cases. The discovery of a novel gene is not an invention; however if the gene was discovered by means of a novel technical achievement or a well-defined industrial application for the gene can be described, it is an invention. You should therefore discuss with us any scientific findings that may fall into these categories, because you may have made a patentable invention.
A patent is the most effective way to protect IP as it entitles the holder of the patent to exclude all third parties from commercializing the patented inventive idea for a period of 20 years, starting from the date of filing (there is however an exception: scientific research on the subject of the invention is free). The holder of the patent is free to use it commercially, but he can also grant a license to third parties, allowing them commercial use of the invention. All patent applications are disclosed after 18 months and made accessible to the public in order to contribute to the dissemination of technical knowledge.
As scientists of the Max Planck Society are obliged to publish the results of their research as soon as possible, you should try to protect your invention by filing for patent applications prior to publication. Once you have filed a patent application, priority is ensured under patent law and there is usually no obstacle to scientific publication.
Besides patents, the utility model offers protection for smaller inventions, e.g. technical improvements. However, this protection does not cover process inventions and is limited to a maximum of 10 years. Also, broad international protection is not possible. Therefore the utility model is of minor importance to the Max Planck Society.
Inventions which are novel and commercially applicable and which have a sufficient level of inventiveness are patentable. The following, for example, can be patented: devices and instruments of all kinds; chemical and pharmaceutical substances, including those which occur in nature (e.g. isolated microbiological or biological material such as DNA sequences, viruses, plasmids, etc.); metal alloys and chemical compounds with so far unknown or new properties; new materials; all means of applying and using known substances, and production processes and techniques of all kinds. Excluded from patent protection are, among others: discoveries, scientific theories and mathematical methods in their own right, EDP programmes, plant and animal species, and inventions that are illegal or immoral.
For plant varieties, special property rights apply.
Also excluded from patent protection are diagnostic and therapeutic procedures performed on the human body (e.g. medical examination practices), as they are not regarded as commercially applicable (see below). Drugs and diagnostic kits may be patented, however.
An invention is regarded as novel if it is not part of the prior art. Prior art includes all knowledge in the public domain – either through written or verbal specification, through use or in any other way – prior to the patent application. This includes, in particular, lectures at scientific conferences or the publication of articles and abstracts in scientific journals. An announcement by the inventor himself also destroys the novelty of the invention.
The inventive step refers to the intellectual achievement behind the invention. An inventive step exists, when the inventive idea cannot be considered “obvious” to a person skilled in the art. However, even a minor step forward compared to the prior art might be inventive. Likewise, the advantageous novel combination of already known circumstances or newly discovered applications (e.g. a second medical indication for a marketed drug) may be regarded as inventive.
An invention is considered to be commercially applicable if it appears suitable for manufacture or for use in any industrial sector. No evidence of this suitability has to be provided during the application phase. However, processes for surgical or therapeutic treatment of the human or animal body as well as diagnostic processes performed on the human or animal body are not regarded as being commercially applicable, although the associated substances and implements are
The sole inventor is the person who, as a result of his inventive idea, finds a solution to a specified problem by technical means. If several persons collaborated on the invention, they are co-inventors – in so far as they made a substantial contribution to the solution of the problem. In the invention disclosure form sent to us you should therefore already specify the percentage share of each inventor in the invention – particularly in regard to the future distribution of the inventor remuneration.
Inventions made by MPG staff members usually emerge within the scope of their research activities or are based on the institute's experience or work. These inventions are thus called "employee inventions". In accordance with the German Employees' Inventions Act, the employer, i.e. the Max Planck Society, is entitled to such inventions – in so far as the Max Planck Society claims them under the stipulations of the act. The claim will be examined and lodged within four months after the filing of your invention disclosure form.
According to Max Planck Society employment contracts and also to the Employees' Inventions Act, all occupational findings or ideas that may have inventive character must be reported to the institute's management. A special form is available for this purpose and can be obtained from the management or from Max Planck Innovation . Furthermore, the inventor must, to the best of his ability, support the Max Planck Society in its efforts to apply for and commercialize his invention. As a rule, your accompanying know-how is necessary to enable a future licensee to realise the economic potential of a product based on your invention.
Please ask your institute's management or turn to us for advice. Just call us – no red tape involved!
Usually, you are free to publish as soon as you have secured priority for your invention by filing a patent application. Prior to the so-called priority date, however, you should proceed very carefully. Premature publication of research results represents the greatest danger to the patentability of inventions. Publications in this sense include not only journal articles, but also speeches, lectures, presentations at conferences and seminars, as well as disclosure of data and results on the Internet. Conference posters, abstracts in conference proceedings, etc., are just as damaging to novelty as disclosure in handouts or masters and PhD theses. Due to the fact that such publications – even if they are theoretical in nature – can hint at the innovative idea, they endanger later IP protection in relation to the inventive step. Therefore, you should contact us prior to the publication of any research results that seem – or whose further development seems – to be commercially viable. We can advise, whether IP protection is worthwhile.
After receiving your invention disclosure form, we examine whether the invention is likely to lead to a successful patent application and we evaluate the commercial potential. To this end, we conduct patent searches and market research. If the evaluation is positive – and after clearance with you and the Max Planck Institute, who meet the costs of the application – we instruct an independent patent attorney experienced in the relevant field to draw up the patent application. We aim to burden you as little as possible with this process. In general, the rough draft of a planned publication is a sufficient basis for a patent application. Subsequently, you will receive an outline of the application for your review and will be asked to answer any unresolved questions. Occasionally, a working session with the patent attorney may be necessary.
Know-how refers to all unpublished knowledge that gives its owner an advantage over his competitors. Know-how may have inventive character. However, if no patent application is filed, the Know-How is only protected until it is made public. New processes, advantageous combinations of known features, formulas, processing tricks, cell lines, antibodies, animal models, etc., can all count as know-how. Know-how generated by employees of the Max Planck Society within the scope of their work belongs to the Max Planck Society, without any formal acts. If you have generated know-how, then please notify us using an invention disclosure form. To a significant extent, know-how is the subject of license agreements. As for patents, successfully commercialized know-how is remunerated according to the Max Planck Society employees' invention regulations.
This is a complex question, and unfortunately the regulations in Germany, Europe, and the US are not standardized. There is agreement, however, that software can be patented if it is linked to a technical application (so-called computer-implemented invention – e.g. measuring, control and adjustment software). For example, the software preventing the blocking of car wheels during breaking (antilock braking system) is patented.
Frequently, a decision is made not to patent software, which is instead classified and commercialized as technical know-how. As a rule, software is covered by copyright protection if it clearly surpasses the usual process of creating programmes with more or less routine, mechanical-technical stringing together of existing algorithms etc. Copyright protection exists from the point of completion of the software. In contrast to patents, no official document is issued by a public authority. Similar to know-how, software written by employees of the Max Planck Society within the scope of their work belongs to the Max Planck Society without any formal acts. If you have written software, we kindly ask you to fill out an invention disclosure form. The Max Planck Society remunerates employees for commercialized software according to the employees' invention regulations.
License agreements grant industrial enterprises rights to the commercial use of inventions/patents, technical know-how, and software – in return for a fee. Typically, an upfront payment, milestone payments and royalties, as well as reimbursement of patent costs are expected. License agreements are negotiated, closed and monitored by our patent and license managers and our lawyers. We take particular care that license agreements do not limit the freedom of research, research collaborations and publications of the Max Planck Institute involved.
Industry often is interested to collaborate on a particular research area with a Max Planck Institute or to further develop a licensed invention in collaboration with the Max Planck Institute. The respective cooperation agreements usually provide for grants that allow the institute to carry out the developmental work.
The following should be ensured when drawing up the contract: that the subject of the collaboration is sufficiently narrowed down so that it does not comprise the whole research area of the department involved; that the freedom of the institute to publish is guaranteed (taking into account the interest of the collaboration partner); that inventions made by scientists of the Max Planck Society within the scope of the collaboration are owned by the Max Planck Society and not the industry partner (usually, the industry partner is granted an option for a license with fair terms), and that license fees are not waived in exchange for contributions in kind or research grants. Although we provide support for the closing of a consultancy agreement, the formal responsibility lies with your institute and the finance department of the Max Planck Society. In contrast to license agreements, which are closed by Max Planck Innovation, cooperation agreements are concluded between the industry partner and the institute itself.
If an industry partner requests the personal advice of an employee of the Max Planck Society to solve a scientific problem – either in addition to, or independent of, a license or cooperation agreement – a (private) consultancy agreement can be made. Prior to closing a consultancy agreement, the employee has to obtain clearance for the agreement and the secondary employment (so-called Nebentätigkeit), either from the institute’s management, or – for directors and leaders of junior research groups – from the president or the secretary general of the Max Planck Society. When drawing up the contract, it should be ensured that the area of consultancy is sufficiently narrowed down so that it does not comprise the whole research area of the employee involved, and that inventions made by the scientist within the scope of the consultancy are owned by the Max Planck Society and not the industry partner (usually, the industry partner is granted an option for a license with fair terms). The Max Planck Society provides support for the wording of a consultancy agreement.
Material samples arising from one's own research activities should only be given to third parties for research purposes, and then either to scientists with whom one is on friendly terms, or to recognized research institutions, on the basis of a written agreement. If you are not the supplier but rather the recipient of material samples, you should turn in the MTAs from the respective research institutions or companies for review by the Max Planck Society prior to signing. More
According to the current MPG regulations covering Employees' inventions dated March 9, 1967, you generally stand to receive up to 30% of the gross license income that Max Planck Innovation receives from the commercialization of the IP or know-how you created. This compensation exceeds the minimum rates of indemnification for employee inventions provided for by guidelines currently in force in private industry and in the public sector, and is intended to motivate you to participate actively in technology transfer.