29 May 2001
reform of german university patents LAW
The German Upper House of Parliament – the Bundesrat – has proposed a substantial reform of the law on the ownership of patents made in German universities. The proposal, which still has to be passed by the Lower House of Parliament (“Bundestag”), will amend the current German Act on Employees’ Inventions. According to the current Section 42 of this Act, inventions made by university lecturers remain their own personal property. Unlike commercial companies, universities have no right to claim the rights to these inventions or to file patents on the inventions. The proposal will amend this anomaly and place university employees on the same footing as those in industry.
Under the reform, university inventors will enjoy a share in the rewards that the university receives from licensing or sale of the invention. The inventor will continue to have the right to exploit his or her own invention for teaching and/or research purposes. Furthermore the inventor has the right to prevent the publication of the invention in the form of a patent or utility model. The notes accompanying the proposed reform explain that these last two provisions are necessary because of the constitutionally guaranteed freedom of research.
The proposed reform is attractive for companies interested in contracting research out to German universities since their opportunities to obtain protection for the intellectual property created will be more secure. Instead of separate agreements with the university employees as well as with the university, the university can claim the rights to the inventions made and transfer these rights to the contracting company.
Licensing of intellectual property by the universities will also be substantially simplified since the universities will be able to directly claim ownership to the inventions and it will not be necessary to make separate agreements with the inventors to enable the universities to market intellectual property created in their laboratories. Due diligence investigations will also be easier as there will not be a myriad of differing agreements with the inventors.
The German Government has indicated its support of the reform proposals and members of the Christian Democrat opposition in the German Parliament have also spoken out in favour. Not surprisingly the German Association of University Teachers (Hochschullehrerverband) is critical as are some patent attorneys. The German Government is proposing a more sweeping reform of the law on employees’ inventions that is likely to be more controversial and there is a risk that the limited proposals for reforming university invention will be delayed by discussions on the wider-ranging reform.
1. The German Parliament is divided into two houses. The lower house of Parliament (“Bundestag”) consists of directly elected members. The upper house of Parliament (“Bundesrat”) represents the German states (“Länder”) and must be consulted for certain issues including education and science policy. Both houses can propose laws.
For further details on the German Law regarding Employees’ Inventions
in English see: http://www.munich-ip.de/Themes/Employees_Inventions/index.htm
Dr. Robert Harrison, Zehetmayr
Str. 16, 85604 Zorneding/Munich, Germany.