for Internal Resercher

Handling of Invention

TMDU's approach towards handling of intellectual property

In order to promote the acquisition of patent rights for intellectual property created by the University's researchers and faculty during the course of their educational, research and medical activities, TMDU has determined that all research results, in principle, belong to the University and has established the Regulations Concerning the Handling of Intellectual Property that incorporates a compensation system. The Regulations were drafted with the purpose of rewarding researchers and faculty staff for their inventions, protecting their rights as inventors, and enabling patent applications and licensing procedures to be carried out in a strategic and smooth manner.

Procedures for acquisition of patent rights for research results (filing a patent application)

[1]Submission of an Invention Disclosure Form

Researchers who have made a breakthrough must promptly submit an Invention Disclosure Form to the Industry Alliances Division. Information regarding plans, if any, to present the invention at an academic conference or elsewhere must be included along with the Invention Disclosure Form.

Invention Disclosure Form(47KB)

[2]Meeting with the Inventor

The relevant personnel of the Industry Alliances Division then meet with the inventor and verify information such as details about the invention, partnering companies (collaborative research partner, scheduled licensing partner, etc.), and future schedule (plans to present the invention at academic conferences or elsewhere).

[3]Intellectual Property Evaluation Committee Meeting

A meeting of the Intellectual Property Evaluation Committee is held by the Industry Alliances Division to determine whether the patent rights of the invention are to be assigned to the university, and the inventor is notified of the decision taken by the Committee. When the Committee determines that the patent rights are to be assigned to the university, the inventor is required to submit a Deed of Release.
*If an inventor disagrees with the decision taken by the Committee regarding patent rights, he/she must contact the Industry Alliances Division within two weeks from the date of receipt of the notification.

[4]Handling of an Invention with Patent Rights Assigned to the University (procedures from filing a patent application to acquiring patent rights)

Please see "Procedures from filling a patent application to acquisition of patent rights" for details.
Procedures toward acquisition of patent rights are carried out in a strategic manner. The Industry Alliances Division first works with the inventor to file a patent application for an invention whose rights were assigned to the University. Decisions, regarding whether it is necessary to file an international patent application based on a priority claim or request a preliminary examination of the patent application, are made by the Division as and when required. After the patent has been acquired, the Industry Alliances Division discusses with the inventor the period of time for which the patent rights are to be maintained. TMDU has a compensation system in place for researchers whose applications for patents or designs/trademarks have been registered. Please see "Compensation system" for details.

Procedures from filing a patent application to acquisition of patent rights

[1]Patent Application Preparation Meeting

After a decision has been taken to file a patent application, specialist staff of the Industry Alliances Division (including external consultants subcontracted by TMDU) meet with a patent attorney from the patent office commissioned by TMDU to discuss in detail the research process, research results and other information regarding the invention in question and to prepare the necessary documents.

[2]Filing a Patent Application

The patent attorney submits the patent application to the Japan Patent Office.

[3]Laid-open Disclosure Public Patent Bulletin

The contents of the patent application will be published in the laid-open disclosure public patent bulletin eighteen months after the application was filed.

[4]Filing an International Patent Application claiming the Right of Priority

To promote the global utilization of research results, TMDU files overseas patent applications as well. In principle, these are international patent applications based on the claim to priority in accordance with the Patent Cooperation Treaty (PCT). Although the claim to priority requires re-filing within one year after filing a patent application in Japan, there are some advantages; for example, patentability is judged by criteria at the time when the basic patent was filed in Japan. However, filing an international patent application and maintaining the patent involves significant costs. Therefore, TMDU carefully scrutinizes inventions to decide whether or not to file an international patent application, taking various factors into consideration, including changes in marketability and technology trends, prospective licensee(s), the possibility of obtaining support for filing an international patent application from Japan Science and Technology Agency (JST), and the opinion of the International Preliminary Examining Authority (IPEA).

[5]Examination Request

If an examination request is not made within three years after filing a patent application, the pending application will be cancelled. The Industry Alliances Division makes timely examination requests taking into consideration the details of each invention for which an application has been filed individually.

[6]Notification of Reasons for Refusal

The actual examination starts only after the examination request has been accepted. When a particular patent application is rejected, a Notification of Reasons for Refusal is sent to the applicant. A written argument or amendment (prepared by the patent attorney) may be submitted within 60 days after receiving the notification. The Industry Alliances Division staff meet again with the inventor to prepare these documents. Notifications of Reasons for Refusal are usually received many times before a patent is granted. If there are no reasons for refusal, a decision to grant a patent is made (as explained in item (8))

[7]Submitting a Written Argument or Amendment

Upon receiving the Notification of Reasons for Refusal, the applicant may submit a written argument or amendment. To avoid receiving the Notification of Reasons for Refusal, an amendment is sometimes filed voluntarily prior to receiving the Notification. Based on the meeting with the inventor mentioned in item (6), the Industry Alliances Division staff and the patent attorney decide on the course of action, and prepare and file necessary documents.

[8]Decision to Grant a Patent

If the reasons for refusal to grant a patent are eliminated after submitting a written argument or amendment, the Japan Patent Office makes the decision to grant a patent and notifies the applicant of the decision. The patent fee must be paid within 30 days after receiving the notification. Upon receipt of the patent fee, the Japan Patent Office will register the patent and the invention will be published in the laid-open disclosure public patent bulletin. The patent rights can be maintained for a period of up to 20 years from the application date (up to 25 years for pharmaceutical patents) by paying the patent fee every year. The patent rights thus acquired can be used for technology transfers and other licensing.

[9]Decision of Refusal

If an applicant disagrees with the Japan Patent Office decision to refuse granting of patent rights for a particular invention, he/she can appeal against the decision of refusal.

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