World Intellectual Property Organization

The IPR Strategy of GFal: A Not-For-Profit German Research Network With its Own Manufacturing Operation

Introduction

In 1990, GFaI (Gesellschaft zur Förderung angewandter Informatik e.V. – Society for the Promotion of Applied Computer Science) was founded as a non-profit association. In the initial phase, it had 8 to 9 staff, including some internationally renowned computer scientists. Today, it has some 90 staff. In addition, some 100 companies and institutions are members of GFaI. GFaI is an associated institute of the technical universities of applied sciences, FHTW Berlin and TFH Berlin.  

GFaI has a network based on successful cooperation amongst its members and on the contacts of its members. The GFaI network was established to enable scientists and technologists to work together in the future-oriented field of information technology and its applications. Partners of the initiative include small and medium-sized enterprises (SMEs), big companies and publicly-funded institutions. 
 

Dr Hagen Tiedtke, GFal
Dr Hagen Tiedtke, GFal
Executive Director
 

GFaI Executive Director, Dr Hagen Tiedtke, shoulders a complex set of responsibilities. Apart from having the final responsibility for all strategic decisions concerning research and development projects, he is also responsible for all commercial and fiscal questions, and issues regarding business management and human resources management of the society.  As Executive Director, Dr Tiedtke also takes the final decision on filing IP applications.
 
GFaI, a non-university society under private law, places emphasis on being proactive, and following an unbureaucratic approach that relies on teamwork. GFaI is engaged in a large variety of joint research projects and R&D contracts. In some product areas, GFaI covers the entire range of technology transfer processes, i.e., from contract research and in-house production to sales and complaints management, associated with licensing questions and standardization issues. 
 
Although, the society mainly works under national research and development contracts, it also manufactures its own products. One of its particularly successful top products is the acoustic camera, developed and produced by Gerd Heinz and a GFaI team. It makes it possible "to listen with the eyes". The camera is connected with 36 microphones and a computer. It generates optical images of noise sources. Loud areas are shown in red, and soft areas in blue. The relevant high level noise sources can be detected quickly allowing to pinpoint and repair a defect. The camera was developed by the GFaI team in cooperation with potential customers of the high-tech industry, such as Porsche AG. Presently, it is mostly (90%) used for noise reduction and fault detection in the car industry. Other applications are in the construction equipment and domestic appliances industries, and the range of applications is being extended constantly. The acoustic camera is successfully used even in biological research and in music. The acoustic camera is assembled and tested by GFaI staff, and shipped directly to customers. The majority of the necessary components – developed by GFaI – are provided by 20 mostly regional suppliers. An ever-growing number of orders for the camera are coming in. The price per unit is roughly Euro 100,000. That makes the invention not only a scientific, award-winning success but also an economic success for GFaI. Since 2007, sales of the acoustic camera are managed by GFal Tech GmbH, a hived-off, 100 percent subsidiary of GFaI. As of 2008, the acoustic camera will also be assembled by GFal Tech GmbH. GFaI's products, e.g., the acoustic camera, are marketed worldwide. The annual business volume of the society amounts to about Euro 8 million. The annual export revenues amount to over Euro 1 million. 
 
 
Roughly half of the financial resources of GFal come from public funding, i.e., winning public tenders for projects of the Federal Ministry of Economics and Technology, the Federal Ministry of Education and Research, and other research funders. The second half of the revenues come from research contracts of industry, licensing contracts, scientific services and its business operations.
  
 
Among the customers of research contracts are companies and institutions in the following fields: Car industry, steel building industry, ceramic industry, robotics, cardiac medicine and dentistry, construction equipment industry, domestic appliances industry and the Federal Ministry of the Interior.
 

Projects of GFal as Network Manager:

  • Solutions for computer aided facility management
  • Process integration
  • Service network for sensors in health services

 Awards for GFaI Teams:


 

Secrecy, Patents and Trademarks

 
For the "Gesellschaft zur Förderung angewandter Informatik e. V.", as a software developer, a key question that arises is how to effectively protect its new developments. Patenting of software is often problematic, because the yardstick for determining technicality, which is a requirement for patentability, can be problematic as it is often judged very differently.  Due to the complexity and the costs for worldwide patent protection of IP protection in the field of software engineering , the  Executive Director of GFaI files patent or utility model applications for only about 20% of the technical solutions of the society that are eligible for patent protection. This is so because GFaI applies for a patent or utility model protection only after making a  long-term evaluation of costs and benefits and provided these fit into its overall strategic objectives. 
 
Frequently, requests from customers are the starting points of its research activities. As a result of these activities, if something worth is created in connection with its research contracts, mostly GFaI alone has the right to file a patent  application for that technical solution and possibly grant licenses, although the cooperation partner are sometimes  a co-applicants for the patent.  If the developed software produces no direct technical effect, either claiming copyright may be considered or ensuring secrecy, provided the software can be “hidden” in the product. GFaI is the applicant or owner of several national patent applications, patents, and utility models. Based on the conviction that the “acoustic camera“ would become a worldwide success, GFaI used its financial power to file an EP/ PCT patent application in some 100 countries.
 
Even so, in the field of intellectual property protection, GFaI may be considered to be still in the learning phase. For example, once, in connection with an important new invention, the success made the inventors feel so “euphoric” that they talked about it to the media. Later, when a patent application was filed at the DPMA, the media statements proved detrimental to the novelty of the invention.  As such, the patent application was rejected due to lack of novelty.  As a consequence, GFaI took steps to ensure that proper policy guidelines including a defensive publication policy is adhered to. In case of doubt, a patent application is filed at the DPMA before any public relations campaign is initiated.  
 
The services of a patent law firm, located in Berlin – Adlershof close to the GFaI base, are utilized to draft  patent applications and to prosecute them at the DPMA. For many years now, cooperation with the nearby law firm has been effective and unbureaucratic. That patent law firm also monitors IP rights, if necessary.
 
Until now, GFaI has not had any experiences with patent infringement. It has not learned of any cases of infringement of its own rights, nor has it been accused of infringing the rights of others. GFaI has neither the personnel nor the financial resources for infringement disputes.   
 
GFal realises that the most effective protection for  a small entity like it lies in continuously developing new and improved technical solutions to the technical problems before it.  It considers this to be the only way to always stay one step ahead of its competitors. It considers patent protection to be very important for marketing its products, as patenting discourages copying, strengthens the positive image of GFal and influences positively its customers in their purchasing decisions. 
 
GFaI does not have a predetermined budget for its IPR needs.  In any given year, the allocation of financial resources for this purpose depends on the expected profit.
 
GFaI is engaged in strategic licensing of its technical solutions that GFaI does not market itself. Presently, the society obtains the biggest licensing income from software applied in dentistry for tooth restoration.  
 
If project leaders in GFal think that the searches performed in the publicly accessible patent databases of the DPMA/ EPO, “DEPATISnet/ esp@cenet”, are not sufficient, then publicly funded technology agencies are commissioned to conduct IP searches, on the state of the art, on development trends or on the IPR situation for a specific development project.
 
GFaI is the proprietor of several word marks for product names. The society logo is also protected as a word/ figurative mark.  GFaI suffered some setbacks in the past due to lack of experience in protecting trade marks. Particularly, the legal requirements for the registration of word marks (Sec. 8 Trade Mark Law) proved too high a hurdle for some of its trade mark applications (distinctiveness/ need to keep the sign available for general use). As a consequence, GFal has realized that product names should be chosen carefully and critically questioned to prevent their subsequent protection as trade marks. So far, GFal has had the experience of resolving a trade mark dispute through an out of court settlement.
 

Recommendations to SMEs

 Protecting leading edge technology by IP rights paves the way for ensuring sustainable competitiveness. Faster implementation of customer needs and faster recognition of new trends are indispensable requirements for creating customer-oriented cutting edge new and improved technologies.  
  • Strategically important fields of expertise of a company should generally be protected by IP rights, provided the effort is justifiable in terms of costs involved.
  • With regard to press and public relations, the company should take care that, despite the joy of sharing its achievements, new research results are made available to the public only after the filing of a patent application. The decision on whether or not to file a patent application should be made promptly after the research results are known.  
  • The existence of patent rights not only protect a company’s own developments against competitors, but frequently also influences the purchasing decisions of its customers. 
  • The costs of international patent protection must not be underestimated. It must also be borne in mind that a patent application always results in full worldwide disclosure of the invention, generally after a period of 18 months of the filing of the relevant patent application. This disclosure may encourage “free riders”  if the SME lacks the capacity to actively defend its patent rights.   
  • The establishment of a regional, non-commercial advisory service would be of great assistance to SMEs. It should answer enquiries of SMEs concerning integrating IPR strategy into business strategy, different ways of exploitation of IP rights, and individual questions, e.g., remuneration of employees that have directly or indirectly contributed to the invention resulting in a marketable innovation.    

Product Facts

Provision of research capacities in the following fields of expertise:
3D-data processing, image processing, computer aided facility management, graph based engineering systems, signal processing (acoustic camera),
adaptive modelling and pattern recognition, document management, fuzzy logic applications, information systems, multimedia & presentation, process automation, robotics, sensors as well as production and sales of GfaI’s own products
  

Profile

 The GFaI is a non-profit research association with more than 90 employees who work on scientific projects and practice-oriented R&D contracts and services. 70 staff are directly engaged in research. The subsidiary "gfai tech GmbH” was founded to support scientific work.

GFaI is active in the promotion of R&D in applied computer sciences and organises the cooperative industrial research in this field within the scope of the "Arbeitsgemeinschaft industrieller Forschungsvereinigungen 'Otto von Guericke' e. V. (AiF)".
 
For projects with national customers, activities usually cover the entire transfer spectrum, from research contracts to standardisation and in-house production to licensing and complaints management.
  
GFaI – Gesellschaft zur Förderung angewandter Informatik e.V.
Rudower Chaussee 30
12489 Berlin
Germany
 
Phone:               +49 (0) 30 6392 1600
Fax:                   +49 (0) 30 6392 1602
E-mail:               info@gfai.de
Internet:             http://www.gfai.de
 
 

IP Background

Patent protection: 6 national patent applications, 1 German patent, EP / PCT applications in 125 countries regarding the acoustic camera
Patent filing order: DPMA first, then EPO/ WIPO for worldwide patent protection 
Trade mark protection: 5 national trade marks (society logo, 4 product names)
IP processing: patent law firm
  

Success Factors:

  • Great scientific potential (“bright minds“) for innovative practice-oriented solutions tailored to meet customer needs
  • No budget limits for international patent protection for inventions regarded as strategically valuable
  • Very active licensing policy with several license grants (due to existing research contracts with customers); but also acquisition of licenses

Contact

 Deutsches Patent- und Markenamt
Technisches Informationszentrum Berlin
Gitschiner Str. 97
10969 Berlin
Germany
 
Phone:                +49 (0) 30 25992-0
Fax:                    +49 (0) 30 250992-404
E-Mail:                 info@dpma.de
Internet:              www.dpma.de

 

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