FAQ

If you have any questions that are not addressed here, or would like to submit corrections, please visit TLS or contact us at tls@oist.jp and we will address them privately or on this webpage as is appropriate.

What is an invention?

An invention is a novel or creative way of solving a problem, however not all ideas are patentable. To be patentable an invention must be 1. of suitable subject matter, 2. novel, 3. non-obvious (include an inventive step in Japan, Europe), and 4. useful.

What is an inventor?

An inventor is an individual contributing to the creative step of an invention. Individuals who have only performed work such as measurements are not inventors.

What is a patent?

A patent is a legal document establishing a priority date for a technology, method, system, or similar, which grants the assignee the right to exclusive use of that technology for a period of 20 years in the designated jurisdiction from the date of filing.

Why should I patent my technology?

  • Patented technologies are more attractive to commercial organizations and are therefore more likely to be deployed in commercial products where they can make a difference to society
  • Licensees pay royalties to OIST, which are distributed to inventors.
  • A good patent history may make it easier to obtain funding

Who pays for patents assigned to OIST?

The TLS covers the costs of the prior-art search, patent drafting, patent filing, maintenance fees, and legal consultation fees.

How are patent royalty distributed

Per PRP 14.3.7.3.1, OIST makes a deduction of 15% for maintenance; the remainder is divided as OIST 28.3%, the Unit 28.3%, and the Inventor(s) 28.3%.

What is an invention disclosure?

The invention disclosure is an important document, listing the inventors by their full legal nanes, their respective inventive contributions to the invention, and describing the invention. It establishes the starting point for the process of evaluating and if appropriate filing for a patent(s). As an inventor careful completion of this document is in your best interest as it may be used to resolve any disputes that might arise. 

Who completes the invention disclosure?

The sections, General Purpose of Invention, Prior Art, Configuration, and Functions and Effects of the Invention should be completed by an inventor. Note that because a provisional patent application is filed materials from research proposals, draft publications and/or public talks can be used to partially complete the above sections of the disclosure. The full legal names of all inventors are required, and may be completed by the Unit RA, the faculty, the PI or by each individual inventor.

What is a provisional patent application?

A provisional patent application or priority patent is a patent application  acknowledged by the US Patent Trademark Office (USPTO), which is can be filed more easily, quickly and an a lower cost than a non-provisional patent application.

Why does OIST file for a provisional patent application?

The purpose of filing a provisional patent application is to establish a priority date to ensure that other inventors who might independently file a patent for a similar invention will not obtain the patent rights to the invention.

What happens after a provisional patent application has been acknowledged?

Once a provisional patent application has been filed the invention is protected and there is a period of a year during which it must be determined whether to commit to a non-provisional patent (ex. PCT patent) or abandon the patent. This year also provides an opportunity for related work to be completed and possibly integrated into the original provisional patent application when filing the PCT application or for filing as separate patents. If the PCT patent application is granted, patents may be filed in, for example, referring to the below, the US, Europe and Japan. Finally, for patents in Europe (EPC), jurisdictions in which protection is desired are selected, referring to the below, France, Germany and Great Britain. It should be noted that the 20 years of protection afforded by a patent are counted from the date of non-provisional filing.

How long does it take to file for a provisional patent application?

From invention disclosure to filing of a provisional patent application (priority filing) takes from 1 to 2 weeks (refer to OISTs Patent Application Procedure PDF).

When can I publish in a journal or give a public talk?

On receipt of the US Patent Trademark Office notification that the provisional patent application has been accepted (TLS will forward the electronic document to the inventor on receipt). This does not however preclude the possibility of submitting a manuscript to a journal in advance of the filing procedure, as long as the publication date is after that of the USPTO filing notification date. Please note that failure to meet this condition will mean that the invention is in the public domain and cannot be patented. If you are unsure please contact tls@oist.jp.

Will I continue to receive patent royalties after I leave OIST?

Yes. If the patent designates you an inventor you will continue to receive the agreed portion of any patent royalties that might be generated as long as OIST has your current contact details.

Will I still have the right of use of my invention after I leave OIST?

For academic research, anyone has the right to use the technology, as it is now public knowledge. For commercial use, the commercial entity would be obliged to contact OIST and agree to license terms.

Can I patent a concept that cannot yet be implemented?

Yes. Refer to for example "Electronic and optoelectronic devices using fractional carrier". However, the benefit of such patents are debatable given the limited duration of the cover provided, thus such inventions will be considered on a case by case basis.