I. General Comments
I. Julius-Maximilians-Universität Würzburg (JMU) is committed to fostering innovation through research and ensuring that University processes that facilitate knowledge transfer benefit from innovation originating at the University. The ideas, products and technologies developed at JMU must be protected and disseminated promptly and efficiently so that society may derive optimum benefit. The University endeavours to provide members who made an invention with the assistance and support they need and to ensure that intellectual property (inventions, software, databases, biological materials etc.) can be exploited in a socio-economically and commercially sustainable manner.
II. To deliver benefit to society is not the only aim of knowledge transfer, it is also increasingly seen as a source of income generation. When innovative products and technologies originate at the University, it is appropriate and desirable for both JMU and the inventors/originators to profit from the exploitation of their intellectual property and, in particular, their inventions. Therefore, the interests of society, of JMU and of the inventors/originators must be taken into account when inventions, improvement technologies or works developed or created by members of the University are being evaluated, protected and exploited.
III. In compliance with applicable legislation, JMU will defend and protect the rights of researchers to the results of their work. JMU does not normally condone or promote undue restriction of or delay in the publication of research findings. JMU provides particular support for academic staff in the formation of spin-out or start-up companies that transform research findings into marketable products and create new jobs. Normally, JMU fosters new business formation by obtaining intellectual property rights as well as providing business founders with an opportunity to use University facilities, equipment and staff. In return, JMU normally receives a share of the income generated from the business activities of the spin-out or start-up that should be calculated on the basis of a standard business plan.
IV. JMU endeavours to obtain protection for its names, logos, seals as well as word and design marks. Whenever a registered trademark of JMU is used, JMU must receive an appropriate share of the income generated through the use of this trademark.
II. Inventions and Patents
The following terms shall have the following meanings:
Inventor shall mean a person qualifying for inventorship who individually or jointly with others made an invention, who meets the criteria for inventorship pursuant to the German Patentgesetz (Patent Act, PatentG) and who is subject to the rights and obligations as provided for in the Arbeitnehmererfindergesetz (Employee Invention Act, ArbEG) of the Federal Republic of Germany.
Invention shall mean any patentable or potentially patentable idea pursuant to Section 2 ArbEG, improvement technology pursuant to Section 3 ArbEG, know-how and any associated or supporting technology that is required for the development or application of the idea or know-how.
Service invention shall mean any invention that was made during the inventor’s term of employment at the University (Section 4 ArbEG) which either resulted from activities that fall within the scope of the inventor’s employment at the University (Aufgabenerfindung) or is essentially based upon the experience or activities of the University (Erfahrungserfindung).
Free invention shall mean any invention that was not made during the inventor’s employment at the University and neither resulted from activities that fall within the scope of the inventor’s employment at the University nor is based upon the experience or activities of the University.
2. Disclosure requirements
All staff members must disclose inventions pursuant to Section 5 ArbEG to their employer without delay:
- All service inventions must be disclosed to the University in an Invention Disclosure Form. Said form must be submitted to: Service Centre Research and Technology Transfer (SFT), Patents and Licences.
- All free inventions must be reported to the University. Report must be made to: SFT, Patents and Licences.
3. Filing of patent applications and commercialisation
In due consideration of Section I. of this Policy, SFT shall, on behalf of the University as the inventor’s employer, make a decision as to whether the University is to make a claim to or to release an invention. The criteria SFT will take into account include the novelty, inventivity and commercial applicability as well as the market relevance and economic potential of the invention. In addition, SFT will determine whether any contractual obligations towards third parties and/or third party rights exist and will take these as well as any other relevant factors into account. The inventor(s) shall be obliged to work jointly and cooperatively with JMU as well as any parties acting for or on behalf of JMU at each stage of the patent process. The employer shall be responsible or filing an application for intellectual property rights (Sections 13, 14 ArbEG).
The decision on how to commercialise the invention will be made by SFT in contractual cooperation with Bayerische Patentallianz GmbH in due consideration of Section I. of this Policy and will aim to ensure sustainable resource planning.
In cases where the invention was conceived or reduced to practice in whole or in part under or subject to an agreement between JMU and a third party (e. g. a public or private sponsor or other funding source), SFT will take the provisions of this agreement into account. SFT shall make reasonable efforts to keep the inventor(s) involved in decisions concerning the commercialisation of their invention.
Where intellectual property is commercialised through a spin-out or start-up company, the University shall either
- grant a licence or
- hold a stake in the company.
4. Adequate financial reward
In accordance with the provisions of ArbEG, JMU will distribute a share of the revenue generated through the exploitation of an invention to the respective inventor(s) as personal income.
III. Unpatented Materials
Unpatented materials (including biological materials) shall mean cell lines, organisms, proteins, plasmids, DNA/RNA, chemical compounds, transgenic animals as well as other materials useful for research or for commercial purposes for which patent applications are not filed or, if filed, do not issue, where such materials are developed by persons employed by JMU.
2. Disclosure requirements
Unpatented materials must be reported to SFT, Patents and Licences (no official form required).
3. Ownership and commercialisation
JMU shall normally own all rights in unpatented materials and may, in consultation with the parties involved, make appropriate distribution in the public interest, e. g. transfer unpatented materials or grant licences to use unpatented materials against payment of a licence fee, for research and commercial purposes. A share of the revenue generated through the commercialisation shall be allocated to the creators (Institutes, Chairs or Research Groups) in accordance with the provisions of Section V. of this Policy.
IV. Computer Software
Computer software shall mean any computer program (including, without limitation, microcode, subroutines, and operating systems), regardless of form of expression or object in which it is embodied, together with any users’ manuals and other accompanying explanatory materials and any computer database.
2. Disclosure requirements
Computer software must be reported to SFT, Patents and Licences (no official form required). If it is planned that patent protection be sought for the software, the invention must be disclosed in an Invention Disclosure Form.
3. Ownership of computer software
Pursuant to Section 69b Urhebergesetz (Act on Copyright and Related Rights, UrhG), JMU shall have the exclusive right to exercise all economic rights in computer software if said computer software was developed by an employee of JMU in the course of his/her duties or following the instructions of his/her employer. This shall apply for both staff members with employment status Angestellte(r) and staff members with employment status Beamte(r).
V. Revenue Distribution
The revenue generated through the commercialisation of intellectual property or technologies shall be distributed in accordance with relevant legislation and the guidelines in this Policy.
1. Distribution of revenue generated through the commercialisation of inventions/patents
Share of revenue to be allocated to the inventor(s) pursuant to Section 42 ArbEG: 30 per cent of the gross revenue generated through the exploitation
Share of revenue arising to JMU to be allocated to the Institute/Chair/Research Group: 5 per cent bonus if the revenue generated per year is €100,000 or more
2. Distribution of revenue generated through the commercialisation of computer software and unpatented materials:
The revenue generated through the commercialisation of computer software and unpatented materials shall be the gross income arising to JMU from said commercialisation less any laboratory and shipping expenses as well as any other documented expenses incurred in connection with administrative, licensing and distribution processes.
The creator(s) will be entitled to a share of up to 50 per cent of the revenue arising to JMU from the commercialisation; SFT and the creator(s) shall agree upon the exact share to be allocated to the creator(s).
The English text in this document only serves the purpose of providing information on the contents of the corresponding German text. Only the German text shall be legally binding.