Frequently Asked Questions and Answers

If you wish to protect your invention with a patent, first try to evaluate it yourself to see whether it meets the patent requirements. A patent is granted for an invention, in all fields of technology, if it is new, inventive and applicable in industry. There are four basic requirements arising from this definition that must be met to obtain a patent: (1) the invention belongs to a field of technology, (2) the invention is new, (3) the invention involves an inventive step, and (4) the invention is susceptible to industrial application.

Novelty is an important requirement in the patent application process. An invention is considered to be new if it does not form part of the state of the art. The state of the art is defined as everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application. Additionally, the state of the art comprises the content of other patent applications filed before the date of filing of your or our patent application. In other words, the first patent application filed is the first to be examined.

We conduct a freedom to operate analysis (or order the analysis from experts, such as patent attorneys or law firms) to identify potential barriers to the commercialisation of a product or technology. The findings of this analysis allow us to determine the state of the art in the field of technology in which we wish to market or test a product. In this way, we avoid or reduce the risk of third-party intellectual property infringement.

The freedom to operate analysis involves searching patent databases to check whether our product, process, or service infringes on an existing patent or patent application.

To obtain a patent, all patent requirements (the invention belongs to a field of technology, it is new, it involves an inventive step, it is susceptible to industrial application) must be satisfied on the date of filing of the patent application. Inventor(s) and/or applicant(s) must thus protect the confidentiality of their innovation up to the date of filing of the patent application. Premature public disclosure due to the carelessness of the inventor or applicant, may jeopardize, or even prevent, a successful patent application.

IN WHAT CASES do I need to be particularly cautious? Defending graduate and postgraduate theses or doctoral dissertations, publishing journal articles and other materials, delivering presentations at conferences, seminars, or trade fairs, discussing or negotiating with potential business partners or investors. These are some of the ways in which the public can learn, to varying degrees, about your invention or innovation. However, completing and submitting the Invention/Know-how/Software Disclosure Form to the Knowledge Transfer Office is NOT considered public disclosure, although the invention is not yet legally protected.

You should first obtain legal protection (filing the patent application) and only then publish the invention-related research findings. Filing the patent application does not preclude publication and/or marketing of the invention. It is important to follow this order of events to ensure that your application meets all patent requirements.

Publishing and patenting are completely compatible if the patent application is filed before the publication of an article or any other form of public disclosure.

Completing and submitting the Invention/Know-how/Software Disclosure Form is not equal to legal protection of your invention or a filed patent application. Its purpose is solely the disclosure of a service invention to the Knowledge Transfer Office. Also see the question: “Who is responsible for ensuring the legal protection of an invention/innovation?”.

A service invention is determined by the circumstances in which it is created:

• it is created by an inventor during their employment relationship with the University of Ljubljana in the course of fulfilling their employment contract, i.e. in the course of completing assignments required by the University or based on a special contract entered into by the inventor and the University of Ljubljana or a University member (direct service invention);
• it is created in the course of performing one’s job if the creation of the invention was mainly contributed to by the experience the inventor gained at a workplace or by using the resources made available to them by the University (indirect service invention).

When an employee or student of the University of Ljubljana develops an idea or creates a tangible product that they consider exceptional and innovative, they should immediately inform the Knowledge Transfer Office of the University of Ljubljana about their invention or potential innovation. If the inventor is uncertain whether or not their creation is a potential innovation, they are invited to seek advice from the Knowledge Transfer Office, before or after submitting the Disclosure Form. Also see the question: “What is a service invention?”

The Invention/Know-how/Software Disclosure Form should be completed by each person who contributed to the creation of the invention or other innovation, and is:

• in an employment relationship with the University of Ljubljana;
• in a different contractual relationship with the University of Ljubljana (i.e. a guest teacher, associate in a project, etc.);
• a student, if the invention results from their work undertaken to meet study obligations at the University of Ljubljana or if they used the University’s resources in the process.

If several inventors contributed to the creation of the invention (referred to as co-inventors), the Disclosure Form should include data about each of them, as well as attribute their share (in %) of contribution to the creation of the invention. If individual shares are not specified, it is considered that each co-inventor has made an equal contribution and is thus entitled to an equal share. All co-inventors must sign the Disclosure Form.

An inventor is the person who contributed to the creation of the invention either alone or in collaboration with one or more co-inventors. The applicant is the person listed in the patent application, who becomes the owner, i.e. the holder of patent rights after the patent is granted.

The inventor may also be the patent applicant, although this is not a rule. This is particularly applicable to service inventions, where the employer (e.g. the University of Ljubljana) decides to acquire the rights to the invention, and in the cases where the ownership of the rights to the invention is otherwise stipulated by law or a specific agreement. The patent can be granted to a person or a party other than the inventor if the former is entitled to the rights derived from the patent (e.g. to the University as the employer of the inventor, or, for instance, an investor who contributed financially to the creation of the invention on the basis of an agreement).

Address the form to the Knowledge Transfer Office of the University of Ljubljana by:

• sending it to the Knowledge Transfer Office by registered mail (Pisarna za prenos znanja, Univerza v Ljubljani, Kongresni trg 12, 1000 Ljubljana), marked CLASSIFIED – DO NOT OPEN;
• sending it by email to ipr@uni-lj.si (in this case, the form must subsequently be sent by regular mail, as it must contain handwritten signatures of all inventors/researchers) or
• delivering it to the Office in person.

Based on (1) the completed Invention/Know-how/Software Disclosure Form, the Knowledge Transfer Office prepares (2) an assessment of the invention’s potential both from the aspect of legal protection by means of industrial property rights as well as its market potential. The invention is then (3) expertly evaluated by the faculty and, if it so decides, by an external expert from the relevant field. Following this, the invention is (4) discussed by the University of Ljubljana’s Innovation Committee. If the invention shows potential, (5) the Rector issues a decision on the acquisition of the invention.

To prepare a suitable protection and marketing strategy for the invention, it is important that the inventor cooperates with the Knowledge Transfer Office during this procedure, providing additional clarifications and descriptions, and clearly stating their intentions and goals pertaining to the future management of the invention (will the inventor continue to participate in transferring the invention to the market, are they considering an independent business path, etc.).

This procedure is described in detail in the Rules on the Management of Industrial Property Rights at the University of Ljubljana.

The Knowledge Transfer Office of the University of Ljubljana conducts procedures for obtaining legal protection and maintaining industrial property rights. Before the acquisition of a service invention takes place, the Knowledge Transfer Office holds a meeting with the inventors – after the Invention Disclosure Form has been submitted and an assessment of the invention has been made – where all parties discuss the invention, its market potential and the need for patent protection, and agree on the appropriate form of legal protection.

Following the acquisition, the Knowledge Transfer Office initiates the procedure for obtaining patent rights. It selects a patent representative who will work with the Knowledge Transfer Office and the inventor to prepare a patent application and make sure it is submitted to the relevant patent office.

In deciding whether to file for patent protection in Slovenia, or (also) in foreign countries, the so-called territoriality principle comes into consideration: patent rights are limited to the country where they have been granted. It is therefore important to asses, when devising a legal protection strategy for the invention, in which countries or regions your innovation will perform best on the market. It is in those territories that your invention should be protected first.

While a patent is usually granted in 3 to 5 years, the invention is patent-protected from the date of filing of the patent application.

A well-written patent application is the key to a successful patent protection. This is a complex document that requires both legal and technical expertise, and is better not undertaken by inventors themselves. Nonetheless, they are best equipped to assist the chosen patent representative when it comes to describing the invention and developing patent claims. All communication and agreements with the patent representative are managed by the Knowledge Transfer Office, which relays information to the inventor, while any technical communication relating to the invention takes place directly between the inventor and the patent representative with the knowledge of the Knowledge Transfer Office.

Patent applications for service inventions list the University as the applicant (rather than its individual members). Persons who have created the invention are always listed in the application (including those not employed by the University).

One of the objectives of the Knowledge Transfer Office is finding suitable business partners who will successfully market inventions or innovations of the University of Ljubljana, and create added value – for the invention, their company, and the market.

At this stage of the invention management process, cooperation between the Knowledge Transfer Office and inventors is also crucial. Finding a suitable business partner is easier when inventors already have established connections within the academic sphere and the business sector. The process of finding a suitable business partner is neither simple nor quick, and can sometimes take months or even years, depending on the market situation and willingness of companies to invest. It requires patience, perseverance and determination.

There are several ways and approaches to finding a business partner, such as:

• preparing and disseminating promotional materials;
• conducting presentations and pitches for potential partners and investors;
• preparing technology offers;
• directly approaching potential business partners at conferences, trade fairs, and in B2B and R2B meetings;
• publishing research findings and inventions on our website.

Inventions or innovations are transferred to practice in two ways. The first is by licensing/assigning intellectual property rights, and the second by establishing a spin-out company (Also see the question: “What is a spin-out company?”)

A license contract confers the right to commercial exploitation of the licensed property to a third party. The holder of the right (the licensor) remains the owner, while the other party (the licensee) is only granted the right to use the licensed property. The scope of this permission is negotiated by both parties and defined in the contract. The subject of the licence contract can include industrial property rights (patents, trademarks, models), rights registrations (e.g. patent applications), software, and know-how etc.

Transfer of intellectual property rights, where the ownership of industrial property rights or proprietary rights over knowledge/technology is transferred to another party, is characteristic to another type of contracts. A typical transfer of rights contract is the assignment contract. The contracting parties are the transferor (e.g. the assignor) and the acquirer (e.g. the assignee or buyer), who becomes the new rights owner or the owner of another subject of the transfer contract. The parties often conclude a so-called reverse license agreement, whereby the previous owner (the transferor or assignor/seller) maintains the right to use the subject of the contract.

Generally, the University uses this type of contract when it does not intend to market the knowledge, i.e. the right, on its own, using its own channels and means. Furthermore, this type of transfer provides an immediate financial return to the University. Following a successful contractual transfer of rights or knowledge, the new owner is registered at the Intellectual Property or Patent Office, when this is required by law.

Licensing revenues or revenues from the transfer (assignment) of intellectual property rights (innovation income) are used first to cover the costs of intellectual property protection (e.g. patent application fee, cost of patent representative services). The rest is distributed among inventors, the member, and the University, as follows: 10–30% University, 30–50% University member, and 40% inventor(s). The University allocates a share of its revenue to the development and expansion of activities related to the transfer of the University’s knowledge to the business sector.

When several partners or inventors, employed at different institutions or organisations, contribute to the creation of an invention, the participating partners or institutions (as employers) enter into a joint invention agreement. Such an agreement is usually concluded at the end of a project. Its central element is the agreement on the joint ownership of the invention.

The agreement parties lay out at least the following key terms of their partnership:

• ownership shares (individual shares are determined with respect to material, financial, and innovative contributions of each partner) and the intellectual property rights revenue sharing ratio;
• the mode and scope of legal protection (types of legal protection, geographical scope of protection);
• nominating a partner who will coordinate and manage legal protection procedures, sharing of costs related to protecting and exercising intellectual property rights;
• rights to exploit the invention (i.e. further development, sale, or licensing).

By writing the final thesis, the student creates an original creative work, for which he or she acquires copyright by law. According to the Statute of the University of Ljubljana, they must transfer part of the copyright to the University of Ljubljana.

In accordance with Article 10 of the Slovenian Copyright and Related Rights Act, an author is a natural person who created the work. However, it should be noted that upon submitting the final thesis the student transfers to the University the right to reproduce and publicly disclose the work via the Repository of the University of Ljubljana (as stipulated in Articles 132 to 135 of the Statute of the University of Ljubljana).

A tripartite agreement is reached between three parties. For some final theses, the University and the student may seek collaboration with a business or industry partner as part of the thesis preparation (or accept such collaboration if the initiative comes from the partner). In such cases, a tripartite agreement between the University of Ljubljana, the business sector partner, and the student is recommended, since each party has its own interest and objective, as well as different rights and obligations. For the student, this objective, as well as right and obligation, is primarily the completion of a written final thesis and thus the completion of studies at the University of Ljubljana.

At least, the following elements of such agreements should be determined by the parties with respect to the circumstances of the individual case:

• copyright ownership (Also see the question: “Who owns the copyright to a student’s final thesis”?);
• publication of the final thesis;
• who owns the research results described in the final thesis, and who has the right to manage them;
• obligation to legally protect the results before publishing the final thesis (defence).

Through its Knowledge Transfer Office, the University of Ljubljana encourages collaboration with the business sector. ​Such collaboration improves the economic status of the University and its members, which translates into better research equipment, enhances the researcher’s and University’s social reputation, enables more stable development, and lastly attracts students and staff of higher calibre. The benefits of collaboration extend to the social impact that the researcher, the member, and the University can achieve both at home and abroad.

The University of Ljubljana is the largest education and scientific research institution in Slovenia. It has a broad social impact and contributes significantly to Slovenia’s competitiveness. Its commitment to research excellence and expertise brings benefits, advantages, and competitiveness to the economy as well.

The University offers the following services to companies:

• counselling and other services (workshops, expert opinions, analyses, access to research infrastructure). The list of the University’s areas of expertise
• conducting tailored research;
• formulating and conducting joint research projects;
• formulating and conducting Slovenian, international, and European projects;
• partnership in technology development;
• licensing and assignment of the intellectual property rights of the University of Ljubljana;
• collaborating with students;
• recruiting first-rate human resources.

The University of Ljubljana helps you find solutions for the challenges your company is facing. We find the right interlocutors – expert researchers providing potential solutions – and organise face-to-face meetings with researchers. We respect confidentiality.

Write to us at: gospodarstvo@uni-lj.si.

A spin-out is a company licensed to use intellectual property rights granted by an institute/university in exchange for an agreed payment.

A spin-off is a company co-owned by a university or an institute on the basis of intellectual property contributions and/or other capital investments. At present this type of company cannot be established in Slovenia.