Inventions and Patents
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Invention Disclosure
Inventors preparing for an Invention Evaluation Committee should use the Invention Evaluation Committee Template.
Refer to FAQ for definitions of "Inventions" and "Inventors", etc.
- Invention Disclosure Form via Electronic Application System (EAS) <Internal Only>
- Invention Disclosure Form Template
- Sample "Value Proposition Statement" for an invention disclosure
Invention Evaluation
Provisional Patent Application
Evaluated by TLS (Interview with inventors, Prior-Art Search, etc.).
TLS can file a provisional patent applicacion before the Invention Evaluation Committee only for those inventions that meet the following guideline.
Guideline for Provisional Patent Filing
- No prior-art is found in the prior-art search
- A manuscript is ready, or inventors have enough data and drawings equivalent to a manuscript.
- The invention has potential for commercialisation.
Non-provisional Patent Apllication
Evaluated by the Invention Evaluation Committee (Presentation by inventors, Marketing result, Insights by an external patent attorney, etc.)
Inventors preparing for an Invention Evaluation Committee should use the Invention Evaluation Committee Template.
Patent Filing
Important
When applying for a patent several precautions should be observed, including
- Confidentiality
- Inventions should only be discussed between co-inventors, Technology Licensing Section (TLS), and the agents of TLS
- The Invention Disclosure Form is confidential and should be treated as such
- Journal publications and public talks should be made after a patent application is filed (For a provisional application, 4-8 weeks will be required for TLS to file a application after an invention disclosure is received.(<4 weeks from Invention Disclosure)
- Agreements
- Provisions on intellectual property in MTAs and collaborative research agreements, sponsored research agreements and grants should be reviewed (as required)
- Public disclosure should be made after a patent application is received.
Procedures
- Internal Invention Disclosure
Submit an Invention Disclosure Form via E-Application System (EAS) to TLS. The most important part of the disclosure is in Section 10: Description of the Invention (General Purpose of Invention, Prior Art, Configuration, and Functions and Effects of the Invention).
- Prior-Art Search
TLS and external professionals conduct a prior art search, which takes between 4 days and 2 weeks. Upon completion of the search the results will be returned to the inventor.
- Consultation with TLS and Patent Attorneys
TLS evaluates the result of the prior-art search and commercialisation potential. If appropriate, TLS can schedule an informal meeting between the inventor and a patent attorney to discuss patentability in light of the results of the prior art search.
- Provisional Patent Application
Where the guideline for provisional patent filing (see above) is met, a patent attorney prepares a application and OIST files a provisional patent application in Japan (JPO) or in the US (USPTO). A provisional application is a simpler application, requiring less time and effort than a non-provisional patent application.
- Invention Evaluation Committee
Within approximately 6-9 months from the provisional filing, per PRP 14, TLS holds an Invention Evaluation Committee meeting to determine whether OIST will file a non-provisional patent for the invention. The inventors are requested to give a 20-minute presentation explaining the invention and a 20-minute Q&A. In addition, the Committee discuss and evaluate business feasibility, marketability, patentability and future research plan of the invention. The Committee is chaired by the Executive Vice President of OIST Innovation and consists of TLS staff, other OIST Innovation staff, and sometimes a patent attorney as an external professional. The President of the University may also join. - Non-provisional Patent Application
Within 12 months from the provisional filing, OIST files a non-provisional patent application for the invention evaluated and approved by the Invention Evaluation Committee. TLS will ask the inventor(s) to review the legal document, called a patent specification, to confirm it is scientifically/technically correct before it is submitted. OIST typically files a PCT patent application as a non-provisional application, may file non-provisional nationalised applications without going through a PCT filing. See the figure below for the patent filing process.
Filing Process (Illustration purpose only)
In the example above, a provisional patent filing secures a priority date 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. The PCT patent application is further nationalised in the US, Europe and Japan. Finally, for the patent in Europe (EPC), jurisdictions in which protection is desired are selected, referring to the above, Germany and Great Britain. It should be noted that the 20 years (or 25 years for drugs) of protection afforded by a patent are counted from the date of non-provisional filing.
Royalty Distribution
Royalties are distributed to eligible parties, including the inventor(s) based on PRP 14
FAQ