1. Before disclosure of the invention
Scientific research and development at the University of Maribor (hereinafter referred to as ”UM”) usually leads to new discoveries and inventions to the formation of which often contribute more persons, including students and external collaborators.
The invention is a novel or unique creation of the human mind that (1) meets the requirements for patent protection, trademark registration, service mark registration or industrial design registration in accordance with regulations on industrial property; or (2) represents technical or other developments and improvements leading to greater productivity, increased quality of products or services, savings with regard to material and energy, more efficient use of machinery and equipment, improved control over production, greater occupational safety, etc.
For the purpose of guidance in the process of notification of your invention and before submitting the documentation (e.g. digest, article or monograph) for publication or public presentation or disclosure of the invention to third parties we advise you to consult the professionals of UM Technology Transfer Office. Any unauthorized disclosure could namely seriously jeopardize the patent protection or protection of the invention with other industrial property right. Early and complete disclosure to UM and UM Technology Transfer Office is therefore crucial.
2. Disclosure of the invention
The acquisition procedure of employee invention is regulated by the Rules on industrial property rights management at UM and commences by filling an invention disclosure form or other appropriate written notification of invention.
Based on the disclosed information on invention, UM Technology Transfer Office (1) determines the ownership of existing intellectual property rights and the existence of any rights and obligations of third parties (e.g. students and external collaborators as well as partners from the industry and investors), (2) assesses the potential of the invention for protection and commercialization, and (3) provides the most appropriate support and services to the inventors. At the same time, the disclosed information enables the recording of existing intellectual property of UM and UM cooperation with the industry, and monitoring the resulting contractual obligations and validity of industrial property rights of UM.
3. Valuation of the invention
In case the costs of the invention acquisition procedure are financed to a limited extent by UM (up to 60 % of total cost) or entirely by UM, the Committee for preparation of opinion in invention acquisition procedure (hereinafter referred to as ”Committee”) is established and is composed of a representative of the university member, from which the primary inventor is coming from, a representative representing the relevant scientific discipline and a representative of the UM Technology Transfer Office.
Opinion of the Committee includes the examination of the invention, its protection options and the assessment of the commercial exploitation in Slovenia and abroad.
In the process of preparing the opinion, the inventor is obliged to provide the UM Technology Transfer Office and the Committee with all the necessary assistance by offering explanations about the invention and by making the necessary declarations.
4. Acquisition of the invention
If the costs of the invention acquisition procedure are entirely financed by the inventor or university member from funds of the group(s) that created the invention, UM acquires the invention without prior opinion of the Committee.
If (1) the costs of the invention acquisition procedure are financed to a limited extend by the inventor or university member from research grants of the group(s) that created the invention (at least 40 % of costs), while the remaining amount is financed by UM from relevant system resources, or if (2) the costs of the invention acquisition procedure are financed entirely by UM from relevant system resources, the decision on full or limited acquisition of invention is taken by the Rector of UM on the basis of the opinion of the Committee.
Within three months from receipt of the notification of invention at the latest, UM informs the inventor, whether it will acquire the disclosed invention.
5. Protection of the invention
Generally, for each fully acquired employee invention UM must file a patent application or an application for the protection of other industrial property rights in the Republic of Slovenia or member states of the Paris Convention.
Patent protection increases the interest of potential partners and the commercialization potential of invention, because persons without owner’s consent for the exploitation of industrial property rights cannot commercially exploit the protected invention.
Substantial funding and a longer period of time are required for the preparation and filing of the patent application and the eventual grant of the patent.
6. Commercial exploitation of the invention
For the purpose of commercial exploitation of the invention UM Technology Transfer Office identifies partners from the industry with relevant expertise, financial resources and business network to offer the invention as a product or service in the market for the conclusion of license and sale agreements.
If it turns out that the best way for commercial exploitation of the invention is the establishment of a new company, the UM Technology Transfer professionals provide assistance in acquiring of the spin-out or spin-off company status and in managing contractual relationship between the newly established spin-out or spin-off company and UM.
License agreement allows UM to either fully or in a limited extent transfer the right to exploit protected inventions, copyrights or know-how to the licensee for a specified payment.
The licensee develops the licensed technology to a market product or services, which usually requires inventor’s collaboration, clinical trials, acquiring licenses and certifications, support for sales and marketing, trainings and other activities.
In exceptional cases and when appropriate and economically justified, UM sells the industrial property rights to an existing company or a newly established spin-out or spin-off company normally for a one-off payment.
7. Commercial exploitation income sharing
Following the acquisition of the invention by UM, the inventor is entitled to an appropriate compensation when UM starts to commercially exploit either the fully or in a limited extent acquired employee invention.
The basis for calculating shares of the inventor, the university member, the organizational unit where the inventor is employed, UM and the Rector’s fund are gross incomes generated from the commercial exploitation of the acquired invention, while the share depends on the financing structure of the invention acquisition procedure.
If the costs of the invention acquisition procedure are entirely financed by the inventor or university member from funds of the group(s) that created the invention, the income is distributed in the following proportions:
1. The share belonging directly to the inventor is 65 %;
2. The share belonging to the university member or research group that created the invention is 30 %;
3. The share belonging to UM and the Rector’s fund is 5 %.
If the costs of the invention acquisition procedure are financed to a limited extend by the inventor or university member from research grants of the group(s) that created the invention (at least 40 % of costs), while the remaining amount is financed by UM from relevant system resources, the income is distributed in the following proportions:
1. The share belonging directly to the inventor is 50 %;
2. The share belonging to the university member or research group that created the invention is 20 %;
3. The share belonging to UM and the Rector’s fund is 30 %.
If the costs of the invention acquisition procedure are financed entirely by UM from relevant system resources, the income is distributed in the following proportions:
1. The share belonging directly to the inventor is 40 %;
2. The share belonging to the university member or research group that created the invention is 25 %;
3. The share belonging to UM and the Rector’s fund is 35 %.
If there are several inventors or the inventors are employed at different university members or organizational units, the shares specified above are distributed, as appropriate, to all the inventors, university members and research groups on the basis of their contributions laid down in the notification of invention or a written agreement of all eligible inventors, university members and research groups specifying the respective percentages.
Notwithstanding the above stated method of sharing, UM, university members and inventors may by special agreement agree to another way of distribution, which they define in a separate agreement.