FAQ

Contact Technology Licensing Section (TLS) at tls@oist.jp for questions and assistance.

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. novel,
  2. non-obvious (include an inventive step in Japan, Europe), and
  3. 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 (or 25 years for drugs) in the designated jurisdiction from the date of filing.

Why does OIST 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 patent costs?

OIST covers the costs of invention evaluation, patent filing and maintenance, such as prior-art search, patent drafting, patent filing, maintenance and legal consultation fees.

What is an invention disclosure?

The invention disclosure is an important document, listing the inventors by their full legal names, and describing the invention and its usefulness. It establishes the starting point for the process of evaluating and if appropriate filing for a patent.

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 research proposals, draft publications and/or public talks can be used to complete the above sections of the disclosure. All inventors and PI must check and confirm the content, including the inventors' full legal names.

What is a provisional patent application and a non-provisional application?

A provisional patent application is a patent application, which can be filed more easily, quickly and for an a lower cost than a non-provisional patent application. It secures a priority date and gives an applicant 12 months before filing a non-provisional patent application. A non-provisional application is a forma patent application, claims in which will be examined and the scope of its patent right if granted. 

Why does OIST file for a provisional patent application?

The purpose of filing a provisional patent application is to establish a priority date while evaluating the business potential, marketability and patentability, and also to incorporate additional data to a non-provisional application to make the claims stronger.

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

From invention disclosure to filing of a provisional patent application, it usually takes from 4 to 8 weeks. Contact TLS for urgent filing.

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

On receipt of the Patent Office notification that the provisional patent application has been accepted. (TLS will notify the inventor(s) of this.)) 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 officially recognised filing date. Please note that failure to meet this condition will mean that the invention is in the public domain and cannot be patented in many countries.

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

Yes. The inventors will continue to receive the agreed portion of 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?

Anyone has the right to use the technology for academic research and other research purposes. For commercial use, OIST must be contacted to agree to license terms to use your technology.

Can I patent a concept that cannot yet be implemented?

Yes. It can meet requirements to be a patentable invention. However, the benefit of such patents are debatable and OIST may not continue patent filing.