Patenting at universities: What is the best strategy?

Question

I'm a postdoc at a university and made an invention I think could be patentable. I may want to use it for a startup in the future (likely in the US), and would like to have patent protection before publishing in academic journals (the work must be published as I will start my faculty search soon). I would greatly appreciate your advice as I am completely new to patents and just started to read up on it myself.

From what I gather filing a patent application myself would not be feasible financially, so I am considering approaching the university's technology transfer office (or equivalent). What are the pros and cons of doing so?

My understanding is that the university would be the sole patent owner and that as an inventor I would receive 30% of potential licensing fees.

• Is it conceivable that I could be listed as a co-owner?
• If not, do I have any control whatsoever about who the patent would be licensed to? I.e. would I have some kind of priority if I wanted to commercially use the idea myself?
• If I did found a startup, would it have to pay licensing fees to the university in order to use the patent I invented? How substantial are such fees, typically? Could the university as the patent owner deny me using my own invention?
• In summary: How would you recommend I proceed? My objective is to get patent projection before publishing, while maintaining as much control of my invention as possible.

Do I have a choice, even? My employer is a German university and my understanding is that the German Employee Inventions Act obliges me to disclose my invention. However, I have done almost all work outside official work hours and without use of university resources - does this make any difference? For context, I am planning to leave this university and Germany soon.

Are there any do's/don'ts I should know about in terms of strategy? (for example: "You should ask your university if you can be listed as an owner" or "don't file in Germany", etc.)

Bonus question: I am affiliated with a Max Planck Institute as well as said university, so I may have a choice which office to disclose the invention to. Are there reasons (e.g. more/less professionalism) to prefer one over the other?

Any advice is much appreciated!

Answer 1

I am not a lawyer. Nor am I German. I think the essential question is whether the invention came about as a result of your employment by the University. According to this website:

The Employee Inventions Act (ArbEG) particularly regulates service inventions. A service invention is an invention made during the term of employment. It may either have arisen directly from the employee’s activities or be based to a significant extent on experience or work carried out by the company.

You state:

"However, I have done almost all work outside official work hours and without use of university resources..."

The "almost" could be a problem. If you conceived the invention totally on your own time completely independently of University resources and unrelated to your research, then you may be okay. I think the only prudent way of you proceeding is to consult with an intellectual property lawyer to determine if your invention is truly your property or the Universities.

If the University policy is to provide 30% of the licensing income, then that is a better deal then you would get from virtually any company, at least in the US. Licensing and commercialization are generally off topic at this site so I'm not going to attempt to answer those questions.