What is the patent application procedure?
Through the application of property rights (e.g. patents) scientific results can be secured against imitation and illegal commercial exploitation.
There are a number of industrial property rights which enable a reasonable protection. Industrial property rights are only territorial valid. So the protection against illegal commercial exploitation takes place in the countries, where the application was registered. If you have further questions regarding property rights, please contact Unit VI C: Technology Transfer.
A patent can be granted for a technical invention which is new (not state-of-art), based on an inventive activity (not arising from the state-of-art in an obvious way) and industrially applicable (can be carried out in any field of industry).
For the patent application it’s most important that the invention is not published in advance. A patent can be granted only if the novelty of the invention is given. This means that the invention was neither in writing nor verbally disclosed to the public (in addition to publications and lectures this includes also poster, promotions, diploma theses and research papers, research applications etc.). Should it be necessary to present the invention to project partners please contact the Unit Technology Transfer in a timely manner. In any case it’s definitely worth to conclude a non-disclosure agreement. You can get support from the lawyers of the Directorate for Research and Technology Transfer.
After submission of an invention disclosure a novelty search regarding the current state of the art will be conducted. Following the novelty search all scientists involved in the invention will be asked to annotate the results. The aim is to determine (technological/with regard to content) similarities and differences to the state of the art. If (after the annotation by the scientists) all criteria for a patent application are satisfied and the invention is claimed by TU Darmstadt then the priority-establishing initial application at the German Patent and Trademark Office will be filed. Sometimes it makes sense to postpone the application to e.g. observe further results or coordinate the date of patent submission with development and exploitation activities. This will be arranged by the Unit Technology Transfer and coordinated with the scientists on a case-by-case-basis.
The possibility to the expansion of a priority-establishing patent application (“initial application”) with regards to content and region can only take place up to 12 months after filing the application. Within this deadline the Unit Technology Transfer coordinates the further strategy with the scientists and the university administration. Based on a cost-benefit-analysis the university administration in coordination with the inventors decide upon an international registration.
The patent application will be published 18 months after the filing date. With this publication the public will be informed for the first time about the content of the filed patent application and the possible future property right. Starting with the publication the patent document or the status of the patent file can be seen at the patent office. With the disclosure the patent application is also considered a publication and can be quoted as such by the scientists.
The granting of a patent can only be made after a positive test report. The request for examination is possible at the latest 7 years after filing the patent application. Within the official framework of examination requests the patent claims are often restricted/shortened. Therefore it is usually strategically more useful (e.g. in long-term research and development works) not to actively force an examination and granting of the patent application. The Unit Technology Transfer determines and executes the further strategy in coordination with the scientists and the university administration on a case-by-case basis.
If the invention was claimed by TU Darmstadt the university will bear all costs for the priority-establishing (German) patent application. The decision to continue the application as well as to file subsequent application abroad at the expenses of TU Darmstadt will be taken on a case-by-case basis and in consultation with the scientists by the university administration.