Be careful with early disclosures: ⇒ Novelty is key
Your invention must not be publicly known at all prior to the filing date. A poster, a presentation or a public PhD defence will render your idea unpatentable as ‘prior art’. As patent examiners conduct extensive digital searches, inventors often unwittingly block their own path through their own publications. Only once the official acknowledgement of receipt of the priority application has been received the way is clear to publish.

Plan ahead rather than risk missing deadlines:
A thorough assessment, the search and the drafting of the application by a patent attorney take several weeks. Therefore, do not wait until shortly before the submission deadline for your dissertation or publication to file your invention disclosure.

Finding solutions together:
If we work together at an early stage, the protection of your idea can be perfectly coordinated with your publication plans.

The Patents & Licences Unit protects you with:
Immediate NDAs for potential negotiations with companies.
Restriction notices for final theses to ensure internal circulation.
Confidentiality benefits: The 18-month period from the filing date to official publication gives you valuable preparation time ahead of the competition.

A prototype is not required – but a description alone is not sufficient either.

The invention must be described in a way that makes it “workable”. This means that an average expert in your field (the so-called “person skilled in the art”) must be able to reproduce and apply the invention solely on the basis of your documentation, without any inventive input.
The law therefore requires a precise middle ground between a vague idea and a finished product:

What is NOT sufficient (the idea alone):
A purely functional or general description is not enough. Without explaining the specific technical implementation, this registration will be rejected immediately.

What is required (the technical disclosure):
You must disclose the specific solution in detail. To do this, you will generally need to explain the exact mode of operation, the components involved, materials or chemical processes. Design sketches and flowcharts illustrating the principle are also necessary.

Strategic advantage:
As you do not need a prototype, you can (and should) complete the registration of your invention as early as the concept phase and as soon as the technical solution works in theory.

Patent offices examine a patent application primarily against three statutory patentability criteria, as well as for formal and technical feasibility.

1. The substantive criteria:

• Worldwide novelty: The invention must not have been publicly known anywhere in the world on the date of registration.
• Inventive step: The invention must not be obvious to an average expert in the field (the ‘person skilled in the art’). It must not be a mere, simple combination of already known elements.
• Industrial applicability: The invention must actually be capable of being manufactured or used in practice (industry, trade or agriculture). Purely theoretical concepts do not meet this criterion.

2. The formal criteria:

• Enability (disclosure): Is the technical description precise enough for a person skilled in the art to reproduce the invention without making any inventive contributions of their own?
• Patentability of the subject matter: Is it a technical invention at all? Purely mathematical methods, aesthetic creations, rules of games, business ideas or pure software without any technical reference are excluded from patenting by law.
• Formal requirements: Have all application forms been completed correctly? Have the fees been paid? Do the technical drawings comply with the formal guidelines (e.g. black lines on a white background, correct numbering)?

First, the best news for inventors at the BTU and universities in general: 

As a rule, filing a patent application costs you nothing.

If you submit an invention properly via the invention disclosure form and the university claims the invention (i.e. takes ownership of it), it is legally obliged to bear all costs incurred.

These costs include:
The official fees charged by the Patent Office (DPMA/EPO)
The costs of the patent attorney who drafts the registration in a legally sound manner The annual maintenance fees for the entire term

Inventors only bear the costs themselves if the university officially releases the invention. In this case, the rights to the invention revert entirely to the inventor as a private individual.
You can then proceed with the registration at your own expense (guideline figure for a German registration via a patent attorney: approx. 2,500 to 5,000 euros for the initial phase).

No, patents do not automatically lead to commercial success.

A patent is purely a legal protection tool, not a guaranteed economic success. In practice, only around 5 to 10 per cent of all granted patents actually result in a financial profit.

Why a patent does not automatically mean success:

• No market guarantee: A patent protects the technical solution, but it does not guarantee that there will be buyers, customers or a market for that solution.
• High fixed costs: Patents incur significant costs due to legal fees and annual maintenance fees. If the invention is not commercialised, the patent quickly becomes a money-losing venture from an economic perspective.
• Unused patents (“blocking patents”): Many patents are registered by companies or universities purely for strategic reasons, to block competitors, without the technology ever being launched as a product themselves.

How a patent can lead to economic success:
A patent secures the exclusive right to prohibit others from using it. Economic success only arises through subsequent exploitation:

In-house marketing: The invention is successfully produced and sold as the company’s own product. The patent protects the monopoly position and thus the profit margin against copycats.
Licensing: The patent is licensed to established companies. The inventor or university receives ongoing licence fees in return.
Sale: The patent is transferred in full to a third party who wishes to exploit the technology commercially.

In the case of inventions you make in the course of your work at the university, the answer is:
No, the rights do not automatically belong to you. 

Since the reform in 2002, the Employee Inventions Act (ArbnErfG) has applied without restriction to both academic and non-academic staff at universities.
This Act requires you to report any invention made in the course of your employment without delay. You can find the relevant form for reporting inventions at BTU Cottbus–Senftenberg directly in the university’s transfer section.

The examination procedure and deadlines

Once your complete declaration has been officially received, the BTU’s Patents and Licences Department will assess its patentability. From this point on, the university has four months to decide whether to claim the invention or release it:

• Claim by the BTU: If the university decides to claim the invention (or allows the four-month period to lapse – in which case the invention is automatically deemed as claimed), all property rights are transferred to the BTU Cottbus–Senftenberg. In return, the university bears the costs and assumes the obligation for the registration of a patent.
• Invention attribution and remuneration: Naturally, you will be permanently named as the inventor in the patent application. Furthermore, university law guarantees you a statutory, substantial inventor’s remuneration of 30% of the gross proceeds in the event of commercial exploitation.
• Release of the invention: If the BTU releases the invention in writing within the four-month period, you will regain all rights as a private individual. You may then register the invention for a private patent and exploit it at your own expense and according to your own plans.

At a German university (such as the BTU Cottbus-Senftenberg), an employee is legally entitled to 30% of the gross salary or gross revenue from the exploitation of a successful invention.

This is regulated uniformly across Germany in Section 42(4) of the Employee Inventions Act (ArbnErfG).

Key details on remuneration at a glance

• Calculation based on gross income: The 30% is calculated from the gross revenue. This means that the university is not permitted to deduct the costs of the patent application, lawyers or marketing from your share.
• Type of revenue: Money is paid out as soon as the university commercially exploits the invention. This usually takes the form of licence fees from companies or the direct sale of the patent.
• Team inventions: If several researchers or staff members have made the invention jointly, the 30% is divided according to the respective shares of the co-inventors.
• Allocation of the remainder: The remaining 70% of the revenue remains with the university. It is used to cover patent costs and is partly channelled directly back into the budget of the relevant department.
• After changing jobs: The entitlement to the 30% remains in force permanently, even if you leave the university later or retire.

Patent protection applies exclusively in the country in which the registration of the invention was made and the invention was granted as a patent.

Local scope:
A patent is a state-granted monopoly right. A German patent protects the invention exclusively within German territory.
The protection gap:
As soon as an invention is protected only in Germany, a competitor in France or the USA may legally copy the technology, manufacture it there and sell it outside Germany.

International approaches:

1. EPO (Europe)

The traditional European patent: It is examined centrally. However, once granted, it breaks down into a ‘bundle’ of national patents. You must choose yourself in which of the up to 39 EPO member states you wish to validate (and pay for) the patent.

The EU Unitary Patent: Since June 2023, this procedure has offered uniform patent protection in 18 participating EU Member States simultaneously with a single registration.

2. WIPO (Worldwide)

A PCT registration is not a granted patent, but a strategic reservation. You submit one single document and thereby secure the priority date for currently 157 participating contracting states.
Time factor: You gain 30 months from the first filing date. During this phase, a market assessment can be carried out, investors sought, or further development of the invention pursued at a university.
Nationalisation: Once the 30 months have elapsed, a decision must be made as to in which specific countries (e.g. USA, China, Japan) the patent application is actually to be made. Each of the selected countries then examines the invention in accordance with national law and charges specific fees.

If a competitor or third-party company infringes a university’s patent, it is the university, as the patent holder, that is allowed to take legal action.

Ideally, the process follows a clear, structured procedure:

Phase 1: Preservation of evidence & investigation:
Report of suspected infringement by the inventors: As the scientists (inventors) usually know their market best, they are often the first to discover infringements (e.g. at trade fairs, in specialist catalogues or in rival products). They immediately inform their university’stechnology transfer department (e.g. the Technology Transfer Office at BTU).
Fact-finding (preservation of evidence): The university or a commissioned patent law firm analyses the competitor’s product. It is examined whether the third-party product or process infringes the claims of the university’s own patent specification literally or equivalently.
Economic risk assessment: Such a process is expensive. The university assesses the infringer’s financial strength, the economic damage incurred and the market significance before deciding to take legal action.

Phase 2: Out-of-court settlement: Universities usually avoid lengthy court proceedings and seek economic advantage and a pragmatic solution:
Claims initiative/warning letter: The infringer is formally contacted. They are asked to explain why they are using the technology. If the suspicion is confirmed, a standard warning letter is issued, including a request to submit a cease-and-desist declaration subject to a penalty clause.
Objective: Retroactive licensing (cross-licensing): Ideally, the proceedings lead to negotiations on a licence agreement. The infringer pays retroactive compensation and future regular licence fees to the university, but is permitted to continue using the technology legally in return.

Phase 3: Legal action: If the infringing party does not comply, the university can file a patent infringement claim before a specialised regional court.
In doing so, it can demand:
Injunction: The infrining party must immediately cease production and distribution.
Disclosure & accounting: The infringer must disclose how much turnover and profit it has generated from the infringement.
Compensation: The university can claim financial compensation (either based on a notional licence fee, its own lost profits, or the surrender of the infringer’s profits).
Destruction/recall: Goods already produced must be destroyed or withdrawn from retail chains.

Although patent law is legally intended to be a ‘benign’ monopoly designed to reward innovation, in practice corporations often use patents strategically as blocking patents. This is not done to bring their own invention to market, but solely to block competitors and prevent technological progress.

The most serious market distortions caused by strategic patenting can be divided into three categories:

1. The “patent thicket”

Large companies often make hundreds of registrations for patents that overlap slightly, all relating to a single product. The result is an impenetrable “patent thicket”. For start-ups or smaller competitors, it becomes financially and legally impossible to check whether they are infringing any of these hundreds of patents when developing their own product. This effectively closes the market to new entrants.

2. “Evergreening” 

This tactic is particularly widespread in the pharmaceutical industry. Shortly before the 20-year patent protection for a medicine expires, the manufacturer performs a registration of minor, often medically irrelevant changes (e.g. a new tablet shape or a slightly altered dosage). This artificially extends the patent protection (“evergreening”). Affordable generic products are kept off the market and prices for patients are kept artificially high.

3. Blocking follow-on innovations

Many modern technologies build on one another. If a company holds a blocking patent on a fundamental core technology and refuses to grant licences, this approach has the potential to halt all subsequent research. 

For the BTU, blocking patents are not an issue.
On the contrary: our aim is technology transfer – we want research to result in real products. To ensure that an invention does not end up in a drawer after licensing, we negotiate contractual usage clauses with companies. Through these ‘best-effort’ commitments, we ensure that the partner is actively driving the technology forward.

No, as an employee or researcher at a university, the invention does not legally belong to you.

Inventions that you make during your working hours or as part of your research at the university are known as ‘service inventions’.

There are only two exceptions where you retain full rights to the invention:
Waiver:
The university rejects the invention in writing within the four-month period (e.g. because the market potential is too low or patenting would be too expensive). In that case, the invention is returned to you as a private individual.
The independent invention:
You have developed the invention entirely in your free time and it has absolutely nothing to do with your research work or your duties at the university. You must also notify the university of your invention, but it belongs to you.

The PCT (Patent Cooperation Treaty) procedure is an international treaty that allows applicants to seek patent protection in over 150 countries simultaneously by filing a single registration. It does not directly lead to a ‘world patent’, but it simplifies the administrative steps in the initial phase.

The procedure is divided into two phases:

1. International phase:

Filing: You submit a central PCT registration (e.g. to the German Patent and Trade Mark Office (DPMA) or directly to WIPO).
Search & Report: An international authority examines the state of the art and produces a search report as well as a preliminary assessment of patentability.
Publication: After 18 months, the registration is published internationally.

2. National or regional phase:

Entry (after 30 to 31 months): No later than 30 months after the earliest filing date (priority date), you must decide in which countries you wish to pursue the patent.
Examination and Grant: From this point onwards, the procedure is transferred to the national/regional offices (e.g. the European Patent Office (EPO)). These examine the patent in accordance with local law and ultimately grant it.

Advantages:
Time savings: You gain up to 18 months extra time to evaluate markets and find investors.
Deferred costs: High costs for translations and local lawyers are only incurred much later.

Yes, this obligation does apply. Under section 18 of the German Employment Relationships Act (ArbnErfG), independent inventions are also subject to the obligation to notify the employer. This provision ensures that the employer can properly assess and confirm the distinction between an independent invention and an employee invention.

An independent invention is an invention made by an employee that was not created during working hours and is not based on experience or tasks carried out within the company. It is the legal counterpart to a ‘service invention’.

In this context, a free inventor is an employee (e.g. a university staff member) who has developed something completely independently of their job. They hold all rights to the invention alone – however, they must still complete the registration of the invention with their employer in accordance with Section 18 of the German Employee Inventions Act (ArbnErfG) so that the employer can verify the ‘freedom’ of the invention.

Positive example: (genuine free invention)

• The situation: A professor of theoretical Physics at the BTU Cottbus-Senftenberg is passionate about building boats in his spare time in his private garage. In doing so, he devises a completely novel, hydrodynamic sail design that makes boats extremely fast.
• Why it is free: The invention has absolutely nothing to do with his chair, his research work or his official duties. He did not use any university equipment for this.
• The result: The professor reports the invention to the BTU. After review, the university confirms that it is a free invention. The professor is permitted to conduct the registration of the patent worldwide at his own expense, retain the rights and keep 100% of the profits for himself.

Negative example: A supposedly free invention (which is actually a service invention)

• The situation: A Staff Member is employed at the BTU in the Department of Mechanical Engineering and is officially conducting research into the optimisation of electric motors for electric cars. At the weekend, whilst sitting on the sofa at home, he has a groundbreaking idea for a new winding technique that makes these motors more efficient. He sketches the design on his private laptop on Sunday evening.
• Why it is NOT independent: The idea falls precisely within his official remit at the university and is based directly on the specialist knowledge for which he is paid. When and where he had the flash of inspiration is legally irrelevant.
• The result: the Staff Member registers the invention as a ‘free invention’. However, the university will contest this classification, as there is a direct link to his work duties. The BTU claims the invention as a service invention. The patent belongs to the university, but the inventor is entitled to the statutory 30% remuneration.

A co-inventor is a person who, together with at least one other person, has made a creative contribution to an invention.

The following criteria make someone a co-inventor:

• Creative contribution: The person has made an original intellectual contribution that has helped to solve the technical problem.
• No minimum requirement: The size of the contribution is irrelevant to the status. Even a contribution of just 5% is sufficient to be a full co-inventor.
• Common goal: The parties involved must have been working, consciously or unconsciously, towards the same technical solution.

This does NOT make someone a co-inventor:

• Mere execution: Anyone who merely follows laboratory instructions, mechanically enters measurement data or solder circuits according to exact specifications is not making a creative contribution.
• Supervisory role: A professor or head of department is not automatically a co-inventor simply because the research took place at their department or because they secured the funding. They must have contributed to the substance of the work and helped to solve the problem.
• Funding / organisation: The provision of a budget, premises or infrastructure does not constitute co-inventorship.

The consequences:
The precise identification of co-inventors and their percentage shares has massive legal and financial implications:

Mention in the patent: All co-inventors must be named in the patent application. If an inventor is deliberately omitted, the patent may, in the worst case, be challenged on the grounds of “unlawful appropriation”.
Distribution of funds at the university: If the university (such as the BTU) commercially exploits the invention, the statutory 30% inventor’s remuneration is distributed exactly in accordance with the co-inventor shares determined in advance.
Joint decision on independent inventions: In the case of an independent invention, the co-inventors may only decide jointly on patenting and exploitation. No one may sell another’s share without their consent.

Patents are neither purely a tool for progress nor purely an obstacle. They are a regulatory tool.

If the barriers to obtaining a patent are too low (i.e. if trivial ideas are protected), this leads to obstacles. If protection is too weak, nobody will invest in groundbreaking research. Modern case law therefore continually seeks to minimise the blocking effect of patents through mechanisms such as FRAND (Fair, Reasonable, and Non-Discriminatory) licences (for mobile communications and tech standards) or compulsory licences (in the healthcare sector) to minimise the blocking effect of patents without destroying the incentive for inventors.