Inventions and Patents

Invention Disclosure

Invention Evaluation

Patent Filing

Royalty Distribution

FAQ

 

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 Evaluation

Provisional Patent Application

Evaluated by TLS (Interview with inventors, Prior-Art Search, etc.).

TLS can file a provisional patent applifacion 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

  1. 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)
  2. Agreements
    • Provisions on intellectual property in MTAs and collaborative research agreements, sponsored research agreements and grants should be reviewed (as required)
  3. Public disclosure should be made after a patent application is received.

 

Procedures

  1. 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).
     
  2. 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.
     
  3. 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.
     
  4. 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.
     
  5. Invention Evaluation Committee
    Within approximately 6-9 months from the provisional filing, per PRP 14, TLS holds an Invention Evaluation Committee meeting which is chaired by the Executive Vice President for Technology Development and Innovation to determine whether OIST will file a non-provisional patent for the invention. The inventor is expected 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. An external professional(s) usually participate to provide advice, and the President and Provost may also join at their discretion.
     
  6. 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 (Example)

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 OIST, the research unit and the inventor(s) based on PRP 14

 

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