Science Vol 298, Num 5596, Issue of 8 Nov 2002, pp. 1173-1175PATENT LAW:New Rules for German ProfessorsChristian Kilger and Kurt Bartenbach*Today, German patent law is undergoing fundamental changes. A law that was enacted on 7 February 2002 aims to increase patenting activity and redistribute the profits generated by inventions made at universities. Under this law, university professors no longer hold exclusive intellectual property (IP) rights to their inventions. Will it improve the situation?German Patent Law: Old Versus NewAccording to the German “Arbeitnehmer Erfinder Gesetz” (ArbEG) or Inventors’ Law, an employee must give his or her employer written notice of a technical invention. The employer can claim rights to the invention or leave these rights with the employee. If the invention leads to revenues and the employer has made a claim to the invention, the employer must remunerate the employee in accordance with a complex legal framework. In industry, the calculation, organization, and payment of inventors have been regarded as time-consuming and costly (1).Until 7 February 2002, German university professors were exempt from the legal obligation of notifying their employer (the university) of their invention. Inventions made by professors (2) were considered to be “free” inventions, belonging to the inventors (see the figure on this page). This Hochschullehrerprivileg (professor’s privilege) was a consequence of Article 5 of the German constitution, which pertains to the freedom of science and research. The professor, despite the fact that his or her funding came from the university and hence the taxpayer, had the right to file a patent application and then to seek a licensee or other means of commercial exploitation of the invention.Because the patent process is costly, most inventions made at German universities were only brought to the patent offices by the private initiative of the inventor or (more frequently) by a third party, usually an industry collaborator. The inventor was the sole beneficiary of all financial income gained by commercialization of the invention. For the most part, however, the financial risks involved in filing and prosecuting the patent application outweighed the entrepreneurial ambitions of the scientist, and few patent applications were filed. Roughly 90% of all inventions filed as patent applications before the German Patent and Trademark Office stem from employees of firms or nonuniversity research institutes (3).The German ministry for science and education (BMBF) argued that the professor’s privilege was depleting the country of an economically valuable asset and inhibiting science and technology transfer. Universities will have the chance to protect all commercially valuable inventions by patenting them. Now, university scientists must also give their university notice once an invention has been made unless they have no intention of publishing their findings. In exchange for the loss of the professor’s privilege, a university scientist will in future receive 30% of all revenues generated through the exploitation of an invention. By law, the same invention is remunerated differently depending on whether the employer is in industry or academia, so a professor could receive more than 100 times the remuneration than a colleague who makes an equivalent invention in industry (4). However, the professor gets nothing if the university does not gain any money. In the past, most R&D contracts between universities and industry have not provided for remuneration for the transfer of patentable inventions from university to industry.Other European RoutesIn striking contrast to the new German legislation, an Italian researcher will, as of October 2002, be the exclusive proprietor of an invention made at an Italian university (5). Inventors must notify the university and must file patent applications on their own. The university is to receive up to 50% of the profits obtained through exploitation of the patent. If the inventor does not exploit the invention within 5 years of its conception, the university acquires the right to exploit the invention (6, 7).In the United Kingdom, each university has its own rules, and much depends on the context in which the invention was conceived (8). Cambridge University has angered some of its professors by proposing that it should hold the rights and patents to all concepts and inventions they create. The university could potentially, as of next year, hold all rights stemming from work done at the university, with the exception of written material like books and articles. Faculty members would keep a share of the profits that declines as the profits increase.The French government also set forth guidelines for calculating compensation for inventions by public employees, including university professors-researchers. To promote the transfer of publicly funded research to industry, it passed a law in 1982 easing the status of publicly funded researchers to facilitate their mobility into existing private entities or start-up firms. (Public researchers as civil servants would formerly have the duty to work exclusively for the State as the public employer and were prohibited from deriving outside personal gain in the course of such employment.) A further 1999 law on innovation and research enables civil servants to found companies exploiting their R&D results (which are owned by or subject to exploitation rights of their public employer). Alternatively, the researcher may work as a scientific consultant for or have a stake in a private company. The new law also endorses the establishment of autonomous “industrial and commercial units” within public research entities (9).Implications in GermanyThe desired result of the revised ArbEG is that more inventions see the light of day and are brought to the patent offices before they get published. This is supposed to lead to active licensing transfer from university to industry and to more companies being founded on the basis of intellectual property conceived within the university environment.In the past, technology transfer know-how in Germany only existed at larger research establishments. In 1970, the Max-Planck-Gesellschaft (MPG) established an IP asset management firm, Garching Innovation GmbH, which is a wholly owned subsidiary of the MPG that now employs about 15 people and has a gross income of about 첨부 파일과거 URLhttp://www.ipleft.or.kr/bbs/view.php?board=ipleft_5&id=173