IP policy and legal basis

Patent and Utilisation Policy of the Julius-Maximilians-Universität Würzburg (IP Policy)

I. Principles

I. It is the aim of Julius-Maximilians-Universität Würzburg (JMU) to support the creation of innovations through research and to allow the added value to flow to university processes that are conducive to the transfer of knowledge. The ideas, products or technologies developed at JMU are to be efficiently and rapidly secured and disseminated in order to maximise the benefits for society. JMU endeavours to support its inventors and to create conditions so that intellectual property (e.g. inventions, software, databases, biological materials) can be exploited in a socio-economically and commercially sustainable manner.

II. In addition to socio-political tasks, economic interests also play an increasingly important role in the transfer of knowledge. New innovative products and technologies are being developed and it is appropriate and desirable for both JMU and the inventors or authors to profit from the utilisation of their intellectual property, in particular inventions. The procedures for evaluating, safeguarding and exploiting inventions, technical improvements or works by members of the University must therefore take into account the interests of society, the University and the inventors or authors involved.

III JMU will represent and safeguard the rights of scientists to the results of their work within the framework of the applicable laws. The most comprehensive and timely publication of scientific literature must be ensured. University-based spin-offs and start-ups involving scientists are particularly supported and promoted by JMU insofar as they convert research results into marketable products and create new jobs. JMU's support for spin-offs generally includes the provision of industrial property rights and the use of university facilities, equipment or personnel. In return, JMU will generally receive a share of the spin-offs' revenues, which will be calculated on the basis of a standard market business plan.

IV. JMU endeavours to protect the names, logos, signets and word and figurative marks of the University. If a trademark registered by JMU is used, it must be ensured that JMU receives an appropriate share of the proceeds from its use.

 

II Inventions and patents

1 Definitions

The following terms are to be understood as follows:

Inventor means a person with inventive qualities who has made an invention either as an individual or together with other persons and who fulfils the criteria for inventor status in accordance with the Patent Act (PatG) and is subject to the rights and obligations of the Employee Invention Act(ArbEG) of the Federal Republic of Germany.

Invention means all patentable or potentially patentable ideas pursuant to §2 ArbEG, technical improvement proposals pursuant to §3 ArbEG, corresponding know-how and the underlying technology required for the development or application of ideas or know-how.

Service invention means an invention made during the term of the employment/service relationship (§4 ArbEG), which has either arisen from the employee's or civil servant's work at the university (task invention) or is essentially based on experience or work at the university (experience invention).

Free invention means an invention that was not made during an employment/service relationship and does not represent a task or experience invention.

2. Duty of disclosure

Employees and civil servants are obliged to report inventions to their employer immediately in accordance with §5 ArbEG:

• Notification obligation applies to all service inventions in the form of the invention disclosure provided for this purpose. The notification must be sent to: Service Centre for Research and Technology Transfer (SFT), Patents and Licences Division
• Notification is mandatory for all free inventions. The notification should be sent to: SFT, Patents and Licences Division.

3 Patent application and commercial utilisation

Taking into account the principles mentioned in point I., the SFT decides on behalf of the university as employer whether an invention will be claimed or whether the invention will be released. Important criteria for the decision are novelty, inventive step and commercial applicability, as well as utilisation criteria such as market relevance and level of economic potential. A contractual obligation to third parties, third-party rights and other factors relevant to the invention are examined and taken into account accordingly. The inventors are obliged to provide JMU or its representatives or authorised agents with the best possible support in all steps of the patent procedure. The employer is responsible for filing the patent application (Sections 13, 14 ArbEG).

The SFT decides in which form and in which way an invention is commercially utilised in contractually regulated cooperation with Bayerische Patentallianz GmbH with the aim of sustainable resource planning and taking into account the principles mentioned in I. above.

In cases where the invention is part of an agreement with third parties (e.g. with public or private sponsors or other funding organisations), the SFT will take the provisions of this agreement into account. The inventors involved will be involved as far as possible in decisions on commercial exploitation.

The following options are available for the exploitation of a property right by a JMU spin-off company:

• Granting of a licence
• Participation of the university under company law

4. Appropriate remuneration

JMU shares the income generated from the exploitation of an invention with the inventor(s) concerned in accordance with the provisions of the ArbEG. The appropriate remuneration is a share for personal use by the inventor(s).

III. Material for which no patent application has been filed

1. Definitions

Unpatented material (including biological material) refers in particular to cell lines, organisms, proteins, plasmids, DNA/RNA, chemical compounds, transgenic animals and other material usable for research or commercial purposes for which no patent has been applied for or granted, insofar as this material was developed by persons employed at JMU.

2. Obligation to notify

The SFT, Patents and Licences Division must be notified informallyof material for which no patent application has been filed.

3 Ownership and commercial utilisation

In principle, JMU has all rights to the unpatented material and may, in consultation with the parties involved, pass it on for both research and commercial purposes in the public interest, e.g. licence or transfer it for a fee. The developers (Institutes, chairs or working groups) have the right to participate in the exploitation income in accordance with point V. of these guidelines.

IV. Computer software

1 Definitions:

Computer software means any computer program (including, without limitation, microcode, subroutine and operating systems), regardless of the form of execution or the object in which it is contained, together with operating instructions and other accompanying and explanatory materials, as well as any computer database.

2. Notification obligation:

Computer software must be notified informally to the SFT, Patents and Licences Division. If the software is to be protected by patent law, an invention disclosure must be made.

3. Ownership of the computer software:

In accordance with Section 69b of the German Copyright Act (UrhG), JMU is exclusively entitled to exercise all property rights to the computer software if the computer software was created by a JMU employee in the performance of his/her duties or in accordance with the instructions of his/her employer. This also applies accordingly to employment relationships.

V. Participation in commercialisation income

The income received from the commercialisation of industrial property rights or technologies is distributed at JMU in accordance with the relevant laws and these guidelines.

1. Distribution key for inventions/patents:

Inventor's share according to § 42 ArbEG: 30 % of the gross income generated by the commercialisation

Share of the Institute/chair/working group in the exploitation proceeds of the JMU: Bonus of 5% for proceeds of 100,000 euros/year or more

2. Distribution key for computer software and for material for which no patent application has been filed:

Exploitation proceeds in respect of computer software and non-patent pending material shall be the gross proceeds due to JMU less laboratory expenses, shipping and other vouchable out-of-pocket expenses for administration, licensing and distribution.

The share of the developer(s) may amount to up to 50% of the exploitation proceeds generated by JMU and must be negotiated with the SFT.