OIST Patent Application Procedure

Precautions to be taken

When applying for a patent several precautions should be observed, including

  1. Confidentiality
    1. Inventions should only be discussed between co-inventors, TLS, and the agents of TLS
    2. The Invention Disclosure Form is confidential and should be treated as such
    3. The timing of journal publications and public talks should be timed to occur after application for a US provisional patent application (<4 weeks from Invention Disclosure)
  2. Agreements
    1. MTAs and SRS contracts should be completed (as required)
  3. Ensuring that public talks/publication in journals will not occur in advance of acquisition of a US provisional patent application.

If you have any questions about the process please contact tls@oist.jp.

  1. Internal Invention Disclosure

Submit of a written description of the invention to using the . The most important sections are; General Purpose of Invention, Prior Art, Configuration, and Functions and Effects of the Invention on page 3. If you consider patenting an invention,it is essential that with the exception of any co-inventors, the details of the invention itself and the Invention Disclosure Form be treated as confidential.

  1. Prior Art Search

External professionals conduct a prior art search, which takes between 4 days and 2 weeks, depending on the invention and how much activity there is in the area. Upon completion of the search the results will be returned to you.

  1. Informal Consultation with Patent Attorneys (optional)

If so elected, 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. General questions will be addressed and it may be determined that a second prior art search is justified.

  1. Invention Evaluation Committee

Per PRP 14, TLS holds an Invention Evaluation Committee meeting which is chaired by the Executive VP for Sustainable Development of Okinawa to determine whether OIST will file a patent(s) 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) will usually participate to provide advice, and the President and Provost may also join at their discretion.

  1. Preparation for Patent Application

A patent attorney(s) will prepare a legal document called a patent specification, for a U.S. Provisional Patent Application (priority application). A priority application requires less effort and time 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. US Provisional Patent Application

Upon successful revision of the draft a provisional patent application to the USPTO will be prosecuted on behalf of OIST.