Patents, utility models and semiconductor protection

Research often produces results that can be exploited commercially in the form of new products, new chemicals, new applications, etc.

In some cases such results can be patented or protected under the rules on utility model protection. These rules are governed by the Danish Patents Act and the Danish Utility Models Act.

What is patent law?

Inventions that are industrially applicable can be patented under the rules and regulations set out in the Danish Patents Act.

According to section 2 of the Danish Patents Act an invention is patentable if:

  • The invention is new (the novelty requirement)
  • The invention is substantially different from the known (the requirement of inventive step), and
  • The invention is described so clearly that it can be reproduced by a person skilled in the art.

The novelty requirement is very strict. Everything that has been made widely available, such as through written works, lectures, commercial exploitation or the like is considered to be known, no matter where in the world it occurs.

According to the Danish Patents Act, you cannot patent:

  • Pure discoveries, theories, methods and similar information, including game rules
  • Works covered by copyright law
  • Computer programs as such. These are protected by copyright law, see Research and copyright. However, you can patent inventions which include computer programs that interact with some form of hardware. In this case what you protect is the actual invention, not the computer program as such.
  • Medical procedures
  • Certain biological inventions, including plant varieties, animal breeds, processes for the manufacture of plant varieties and animal breeds, parts of the human body, etc. You may, however, protect animals and plants that are not animal breeds or plant varieties. Moreover, you may protect artificially designed genes.
  • Inventions whose exploitation would be immoral or contrary to public order, including processes for cloning human beings and the modification of the genetic identity of animals, etc.

Patents are issued by a patents office upon request and require the payment of a fee. In Denmark, patents are issued by the Danish Patent and Trademark Office (www.dkpto.dk) or the European Patent Office (www.epo.org). Both of these websites provide good information about patent protection in Denmark, Europe and other parts of the world.

Note that – contrary to popular belief – it is not possible to obtain a world patent.

The patent right entails the exclusive right to commercial use of the invention, including manufacturing and marketing. See in particular section 3 ff of the Patent Act. Patent protection can last for up to 20 years.

Utility model rights

Any creation which can be industrially exploited, and which involves a solution to a technical problem, may be registered as a utility model in accordance with the provisions of the Danish Utility Models Act. A utility model registration is sometimes called a “small patent”, and the purpose of the Act is among other things to provide a kind of mini-patent protection of minor inventions which are not sufficiently profitable to patent, including inventions made by private individuals.

The following outlines some of the differences between patent rights and utility model rights:

  • Inventions may be patented only if they have novel characteristics and constitute an inventive step. By contrast, obtaining a utility model right merely requires that an invention has novelty and involves an ‘incremental step’. The requirement of ‘incremental step’ is milder than the patent requirement of ‘inventive step’.
  • In relation to patent rights, the Danish Patent and Trademark Office examines the inventions very carefully to ascertain whether or not they possess novelty and inventive step. This is not the case with utility model protection; here, they automatically assume that the invention has novelty and inventive step without further examination.
  • The processing time is shorter when you apply for utility model protection than when you apply for patent protection, and it is cheaper to obtain utility model protection.
  • The duration of the utility model protection is shorter than the patent right protection: 3 years with the possibility of extension for a maximum of 10 years. Patent protection, however, lasts up to 20 years.
  • Utility model protection is not international in the same way as patent rights. While you can obtain a patent anywhere in the world if you submit the necessary application, not all countries offer utility model protection.

For researchers, the possibility of patenting will often be preferable to the rules on utility model protection.

Researchers’ right to their own inventions

When researchers create inventions that can be protected by a patent or a utility model registration, it raises the question of who has the right to apply for a patent (or utility model protection) for the invention – or to determine that the invention should not be patented. The premise is that the right to seek patent or utility model protection for an invention/creation lies with the person who made the invention (creation).

The inventor’s right to take out a patent, however, may be transferred to others. Such a transfer can be made by agreement (e.g. as part of collaborative research).

When an invention is created by a researcher during the course of his or her employment, employers may demand to have the rights to the invention transferred to them. In Denmark, this is regulated by two acts:

  1. For employees at universities, governmental research institutions, public hospitals, regional and GEUS research institutions, the provisions of the Act on Inventions at Public Research Institutions apply.
  2. For researchers at other institutions, including the private sector, e.g. pharmaceutical companies, the rules under the Danish Act on Employees’ Inventions apply.

Act on Inventions at Public Research Institutions

According to this Act, the rights to the invention generally reside with the researcher (section 7). However, the institution may demand to obtain the rights if the employee has made the invention in the course of his or her employment (section 8). If the invention is made by inventors working in separate institutions covered by the Act, the institutions must agree among themselves how to allocate the rights between them (section 8 (3)).

When an employee has made an invention in the course of employment, he or she must notify the institution “without undue delay”, that is, as soon as possible (section 10).

The researcher cannot publish or dispose over the invention before he or she has notified the institution of the invention (section 10(3)), and the institution can, when it receives the notification about the invention, instruct the researcher not to publish or dispose over it for up to 2 months thereafter (section 11(2)). It is important that the researcher keeps the invention secret; otherwise it cannot be patented, as in that case the legal requirements for obtaining a patent, namely that of novelty, will no longer be met.

When the institution has received the notification, it must assess within two months whether the invention is patentable. It must also assess whether the invention can be commercially exploited, and discuss the possibility of this with the employee (section 11(1)). The institution can then either decide to have the rights transferred to the institution, or allow the employee to use them. If the institution fails to adhere to the deadline, the employee retains the rights (section 11(5)). If the institution takes over the rights to an invention, it is obliged to exploit them (section 11(6)).

If the institution decides to have the rights transferred to the institution, the employee, if the institution exploits the rights commercially, is entitled to payment from the institution (section 12(1)). If the institution decides to allow the employee to exploit the rights, the institution is entitled to a fee from the employee (section 12(2)).

The fee is not payable until exploitation of the invention is profitable, i.e. the revenue exceeds the costs.

The institutions may lay down rules on how to calculate the fee (section 12(3)).

Most institutions have a model whereby the institution, if it acquires the rights and exploits them commercially, obtains two thirds of the profits, and the employee one third. If the employee has retained the rights, the model normally followed is that the employee obtains two thirds of the profits and the institution one third.

The law does not allow an institution that grants an employee the right to exploit an invention covered by the law to waive the fee.

A number of universities, etc., have set up special “tech transfer” units in accordance with a special tech transfer act aimed at promoting cooperation between universities and industry. Part of the duties of the tech transfer units is to administer the rights to researchers’ inventions.

The rules listed above apply only to inventions that are made as part of the researcher’s work as a researcher. Inventions made in the researcher’s spare time, and which are not related to the researcher’s work, are not covered by the act.

See for instance the following case brought before the UBVA:

A medical consultant at a teaching hospital was hired to perform clinical research based on studies of patients. In his spare time, he made an invention relating to pacemakers, using equipment that he had bought and paid for himself. The invention was based on purely experimental research in magnet technology and had nothing to do with his work at the hospital. The regional authority he was employed by considered the invention to be covered by the Act on Inventions at Public Research Institutions, but was willing to allow the employee to retain the rights to it for a fee of one third of the revenues, cf. section 12(2) of the Act.

The UBVA stated that in the UBVA’s opinion the invention had not been made ‘in the course of his employment’ in the legal sense, and that all the rights to the invention thus belonged to the medical consultant himself.

The Danish Act on Employees’ Inventions

As already mentioned, this Act is not applicable to teachers and other academic staff employed at universities and other institutions of higher education, cf. section 1(3) of the Act. Instead, the applicable law is the above-mentioned Act on Inventions at Public Research Institutions.

For employed researchers who are covered by the Act on Employees’ Inventions, the following applies:

When an employed researcher has made an invention as part of his or her work, the employers are entitled to transfer the rights attached to the invention to them, subject to the following conditions, cf. section 5 of the Act:

  1. The researcher must have created the invention “during his or her course of employment”
  2. The application of the invention must fall within the scope of the employer’s field of work or, if this is not the case, the invention must relate to a specified task which the employer has given the researcher

An employee who has made an invention which the employers may demand to be transferred to themselves in accordance with section 5 of the Act, is required without delay to inform the employers thereof, stating the details of the invention so that the employers will be able to assess the significance of the invention, cf. section 6 of the Act

If the employers then wish to acquire the rights to the invention, they must inform the employed researcher thereof within four months of receiving the notice mentioned in section 6, cf. section 7(1) of the Act. Prior to expiry of that period, the researcher may not without his or her employer’s written consent dispose over the invention or reveal it to others in such a way that it can be published or used on behalf of others. This does not apply if the employer has declared in writing to have no interest in the invention.

The employee may apply for a patent on the invention or registration of the work even before the expiry of the above-mentioned period, once he or she has provided notification as mentioned in section 6, but if so, the employer must be informed in advance. The employee cannot waive this right in advance.

Semiconductor protection

Semiconductors (microchips) cannot be patented or obtain utility model protection. Instead, they are protected under the Protection of the Topographies of Semiconductor Products Act (“the Semiconductor Act”). The Act stipulates that you can obtain protection of microchips if you file an application for this to the Danish Patent and Trademark Office. In order to obtain protection, the chip must the result of “the creator’s own intellectual effort” and “must not be commonplace in the semiconductor industry”. The duration of the protection is 10 years from the calendar year in which the right came into existence, See section 5(3) of the Semiconductor Act.

The rights to microchips made by researchers under employment probably belongs to the institution at which they work, unless otherwise agreed. This is due to section 4(2) of the Semiconductor Act, which states that the rights to microchips made by employees in commercial enterprises belongs to the companies. According to the legislative history of the Act, this rule must be construed as applicable to employees at universities as well. On the other hand, the legislative history of an Act is not binding in the same way as the actual wording of the Act, so the question has not quite been resolved legally.

Further reading

About The Author

Professor, chairman of the UBVA