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

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).

  1. 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.

  1. Informal Consultation with Patent Attorneys (optional)

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. Another prior-art search may be conducted.

  1. Invention Evaluation Committee

Per PRP 14, TLS holds an Invention Evaluation Committee meeting which is chaired by the Executive VP for Executive Vice President for Technology Development and Innovation to determine whether OIST will file a patent for the invention. The inventor is expected to give a 20-minute presentation explaining the invention and a 20-minute Q&A. An external professional(s) usually participate to provide advice, and the President and Provost may also join at their discretion.

  1. Preparation for a Patent Application

A patent attorney will prepare a legal document called a patent specification. OIST usually file a provisional application in Japan or US (initial application). A provisional application is a simpler specification, requiring less time and effort than a non-provisional patent application. We’ll ask you to review the draft application to confirm it is scientifically/technically correct before it is submitted.

  1. Provisional Patent Application

Upon successful revision of the draft patent specification, OIST as an applicant file a a provisional patent application to the JPO or USPTO.

  1. Non-provisional Patent Application

With further investigation and assessment of the commercial potential, marketability, patentability and futher reserach plan of the invention, and may proceed with a non-provisional patent application within 12 months from the provisional patent appliccation (typically a PCT application at OIST).  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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