The Intellectual Property Department of the Office of Society Academia Collaboration for Innovation (TEL: +81-75-753-9181) is in charge of submission /consultation concerning inventions. For submission of an invention, please download the prescribed form for submission(the Invention Proposal Form) from the website of the Office of Society-Academia Collaboration for Innovation, fill in the details of the invention, and then forward it as an attached file to the e-mail address for acceptance. Also, in the Invention Proposal Form, you are also requested to give several statements that include confidential information, so please create a password or the like on the file as needed when forwarding the same.
Since filing a patent application requires the showing of industrial usefulness, the stage of having an absolute idea would not suffice. Moreover, a certain level of support by experimental data is necessary for an invention in the field of natural science. Nonetheless, it is not a good policy to delay an application to pursue perfection. Please think of a patent application as being similar to an academic conference presentation. That is, the timing for the submission of an invention is when unprecedented and new data is achieved and it is determined that the invention would be enough to deliver an academic conference presentation. As with an academic conference presentation, it is possible to add or improve the data after the submission of the invention until the actual patent application is filed. The details of the additional experimentation will also be revised in collaboration with the patent attorney retained in the preparation of the descriptions for the patent application. There is also a possibility that the contents of the academic conference presentation may be orchestrated. We think it is ideal not to rush to make the submission shortly before a presentation or deadline based on the reason that the presentation is expected to be made or the presentation has already been made, but rather to enhance the contents of both the academic conference presentation and the application for a patent mutually as two sides of the same coin. As such, in cases where publication is expected to be made through an academic conference presentation or a thesis or presentation of results is expected to be made through publication of commissioned research or the like, it is ideal to make the submission of an invention two or three months prior thereto.
Please check the following items (1) through (4) to be noted upon a submission.
(1) Confirmation of inventor(s):
An inventor is a person who performed, in relation to a specific task aimed at, the provision of a specific means for solving the problems, experimental trials, design, experimental production and the like. A person who merely provided a goal or task, moved their hands or manipulated a machine as instructed, or only gave general advice or technological ideas will not be deemed as an inventor. Please double-check all inventors, including students and research participants from other institutions. Also, it is necessary to determine the proportion of contribution among the inventors to the invention by the time of the application and to submit documents to certify the share of each of them in the invention (to be prepared by the Office of Society-Academia Collaboration for Innovation).
(2) Research expenses:
As to inventions generated from a collaborative research with a private entity or the like, from research entrusted by a governmental ministry or agency, or an incorporated administrative agency or the like, or from a scientific research fund or funds from the national government’s project budget or the like, there may be cases where the ownership of the right (or shares therein) to research results, financial resources for the application costs, duty to report to the trustor upon application or the like are determined in advance under a contract. Also, if a single research result is duplicated in multiple result reports as the results of multiple projects, it could be a problem later. So, please determine which expenses for a specific project were used for the invention, and in which project the results were achieved.
(3) Prior art search:
Performing a prior art search as much as possible is requested prior to the submission of an invention. Pursuant to the amendment of the Patent Act of Japan that took effect on September 1, 2002, disclosure of document information on prior arts to the best of the applicant’s knowledge is required upon a patent application (item (ii) of Article 36 (4)). The document information on prior art is necessary for judging the novelty and inventive steps of an invention, and disclosure of document information on prior art and a comparative explanation on the relevant arts by applicants and inventors who are most acquainted therewith is expected to speed up the examination and strengthen the right. Considering that a broad array of research is carried out at the University, cooperation by researchers who are inventors is essential for the prior art search. Even if no case is found by a document search in academic journals, some prior art is published in the unexamined patent publication bulletin after the filing of a patent application. So, please confirm whether the details of the invention to be notified have already been part of a patent application by performing a keyword search or the like at Japan Platform for Patent Information (J-PlatPat) which is operated by the Japan Patent Office. The website of the Kyoto University Digital Library is equipped with the means for a search for worldwide patents and provides Derwent InnovAtions IndexSM, which is database that clarifies the relationship of cited/citation, as well as JDream III, which is a database that enables searches in Japanese of foreign patents and research papers. Also, upon consultation, assistance for patent retrieval will be provided by the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation or TLO-KYOTO Co., Ltd..
(4) Check the status of presentations:
When a paper is submitted or an academic conference presentation is made and the details of the invention become known to the public, the patent application for such an invention will be deemed as lacking novelty, and thus it will not be able to obtain a patent right. Therefore, if an early publication is expected, then please inform us of the expected date of such publication (for the case of an academic conference presentation, it is not the date of the presentation but the date of publication of the proceedings in which it is contained). Also, even if the presentation has already been made, there may be cases where a patent application accompanied by a petition for an exception to the lack of novelty is allowed on the basis of an application of Article 30 of the Patent Act of Japan. So, please inform us of the date of such publication.
After the submission of an invention to the University, the person in charge from TLO-KYOTO Co., Ltd. will at first interview the inventor to hear the details, history and bibliographic items of the invention. Based on the details of such interviewing, additional investigation concerning prior art in patents or academic literature and investigations concerning marketability or the like will be conducted. Thereafter, the University will determine whether it will acquire the invention and file a patent application. If it is determined that the University would acquire the invention and file an application, the University will make the inventor to assign the right to patent to the University, and proceedings for the application will commence. The inventor will be made cooperate with a patent attorney from a patent attorney office in preparing the descriptions. For avoidance of doubt, for an invention that the University decides not to acquire and file a patent application, the “right to patent” will be returned to the individual inventor.
Based on the foregoing, please understand that it takes two to three months from the submission of an invention to a patent application, since there are procedures such as interviewing with the inventor(s), determining acquisition/non-acquisition, preparing the descriptions. However, the time needed for the deliberation may be shortened in cases where there is a candidate entity to implement the invention after the joint application is identified, such as in cases where an invention is generated from collaborative research with a private entity or the like.
The patent procedures involve various steps after the application, including domestic priority claims, publication of applications, requests for examination of applications, responses to the rejection, registrations, payment of annual maintenance fees, overseas applications, and all these have their respective deadlines. Also, when implementing an issued patent, multiple procedures follow, including the execution of a license agreement, change of registration in the patent register, periodical licensing reports, computation and receipt of consideration, and internal allocation within the University. To administer these procedures or deadlines regarding all patent cases internally submitted across Kyoto University in every patent case, the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation and TLO-KYOTO Co., Ltd. have established a new control system tailored to the situation specific to the University in coordination with a software company based on the computerized patent control system used by private companies, with the aim of providing effective and comprehensive administration.
Although these kinds of consultations often arise due to circumstances such as a deadline for the publication, in principle, the determination of ownership should be made before the filing of an application. In cases where an application is filed by an individual or a company without a determination of ownership, it not only injures the principle of ownership of the University, but also causes a problem where the University is not able to pay the application fee to the applicant later (since the application fee is deemed a debt of the applicant, and the University is not able to receive an assignment for consideration). Moreover, filing of an application by adding Kyoto University as an applicant without its consent before a determination of ownership can cause a problem. Even if the deadline is approaching, the Office of Society-Academia Collaboration for Innovation will address the matter once it is communicated thereto before the filing of an application. Above all, please make a habit of making the submission of an invention expected to be applied for, at the time a publication is initially intended (i.e., at the stage of signing up for an academic conference or writing a thesis thereon).
If it is within one (1) year after the domestic application, an overseas patent application can be filed based on the domestic application. While the University is taking measures to support the very high cost for filing and maintaining overseas patent applications, including applying for the Overseas Patent Application Support Program of the Japan Science and Technology Agency, it is inevitable that the University must strictly screen cases to be filed and the country/region to which an application is to be filed. Upon an overseas application, the University will verify whether there is a crucial need for a patent right in the country/region and whether there is a possibility for implementation of the patent.
Even if a patent application is filed, it will not be examined and a patent will not be granted unless a request for examination is made. The application will be deemed to have been withdrawn unless a request for examination is made within three (3) years after the filing of the application. Considering that a substantial cost is incurred for a request for examination and the response to a refusal thereafter, a request for examination should not be made if there is the possibility of any addition of data after the application or any filing of an overseas application (i.e., cases where the original application is deemed as to have been withdrawn). In addition, it would be better to make a request for examination when all of the technology that was not disclosed before the application is published (one and a half (1.5) years after the filing of the application) and the novelty and the inventive step are confirmed, or implementation is likely upon finding a candidate licensee company. Currently, a determination whether or not to make a request for examination is made when two and a half (2.5) years have passed after the filing of an application unless there is any particular reason, including the circumstances described above. Also, a determination regarding maintenance is made every few years after the request for examination or grant of the patent, based on criteria such as whether it has been implemented in the industrial sector and whether it is probable that it would be implemented in the future.
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