Filing a Patent application

DATE OF ORIGINAL ISSUE

RI-0110 -Patent Routing Sheet

RI-0111 -Invention Disclosure

Client: Entity that has contracted the University to carry out work.

Contract Work: Work carried out for a Client under a contract.

Host Unit: An academic department or an RI center that has the principal responsibility for the management of a Contract Work.

Intellectual Property: Creative works that can be protected by law (patents, copyright, trademarks, or trade secrets), and includes all original works whether they are artistic creations, commercial designs, or scientific inventions.

Inventions or discoveries: Original findings, designs, physical or chemical processes, mechanical equipment or parts, compounds, or scientific phenomena developed, found, or recorded, including things that may be patented under the laws of the Kingdom of Saudi Arabia, the laws of other nations, or both.

Inventor: Person(s) who conceives an invention or discovery.

Net Royalty: Royalty after recovery of all expenses, including research and development, legal and marketing costs, and rewards or incentives paid to the Inventor(s).

Patent: Property right granted by a government to an Inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the country or importing the invention into the country” for a limited time in exchange for public disclosure of the invention when the patent is granted.

Patent application: A legal process for the purpose of establishing a patent, including documentation of discoveries or inventions which may be patented in one or more of the world's legal jurisdictions.

Patent matters: Legal processes including, but not limited to, patent application, defense of patent, prosecution of patent infringement, and challenge or protest of patent applications.

Patent review: A study of research findings, documented results, written descriptions, or reports for the purpose of ascertaining whether the material describes inventions or discoveries that KFUPM will protect through legal processes, including possibly a patent application.

Research Institute (RI): The Research Institute of the King Fahd University of Petroleum and Minerals.

Tangible Research Property: This term refers to a research result that is in a tangible form as distinct from intangible (or intellectual) property. Examples of tangible property include research reports, integrated circuit chips, computer software, engineering prototypes, and engineering drawings and the like which can be physically distributed. While tangible research property may often have associated intangible property rights, it may be distributed without securing intellectual property protection by using some form of contractual agreement, such as a formal contract, letter agreement, user license etc.

University: The King Fahd University of Petroleum and Minerals.

PPK002 Legal and Contracts–Laboratory Notebook. The laboratory notebook policy follows standard scholarly documentation, referencing, and practices for reporting and publications. These practices should suffice for intellectual property protection purposes.

PPK003 Patent Incentives. The University to enhance the invention process gives an up-front financial award for researchers who obtain a patent, as well as a plaque and publicity.

It is the policy of the University that individuals through their employment or participation in Contract Work accept University ownership of inventions, tangible research property, original software, or other discoveries. The University may undertake legal measures for protection of rights, such as obtaining a patent or copyright, and to this end Inventors must make a prompt disclosure for Patent Review. University Policy also includes Patent Incentives (financial awards). In addition Inventor(s) have a share of the Net Royalty.

1. All contracts with the University to do Work for a client shall contain clauses which clarify the ownership and contingent responsibilities for intellectual property created or transferred in the course of the contract work.
2. All researchers of the Research Institute shall sign and abide by the “Contract Regarding the Treatment of Research Institute Information, Discoveries, and Inventions” as presented in Appendix A. The Support Services Office (SSO) is responsible for securing each new RI staff member's signature to this contract.
3. All University faculty members working on applied research projects shall sign and abide by the “Contract Regarding the Treatment of Research Institute Information, Discoveries, and Inventions” as presented in Appendix A. The Research and Innovation Support Office (RISO) is responsible for securing each faculty member's signature to this contract prior to his participation in a project.
4. The staff of the Research Institute, University faculty members working on projects, and contractors bound by the intellectual property protection agreements referenced above shall promptly disclose to the Host Unit all intellectual property developments in accordance with this procedure.
5. All reports, journal articles, conference presentations, and other public disclosures of Intellectual Property shall be reviewed by the Host Unit in advance of publication. In the event that Intellectual Property protection may be required this procedure (PPK 001) shall be followed.
6. All researchers shall abide by the requirements of PPK002 regarding utilization of approved laboratory notebooks to record research activities, data, and related information.

To ensure compliance with the above policy and requirements, all inventions, and tangible research property that may justify taking legal measures for the protection of rights (patent), must be disclosed to the University for review, using the following procedure. The major steps of this procedure are also outlined in the Routing Sheet, and RI Form-0111.

Responsibility

1. Prepares and submits to Section Manager or Academic Chair disclosure material in RI-0111 Patents–Invention Disclosure (available from RISO) by completing all sections of the form, and signing indicating his understanding, that if a Patent is issued, the Net Royalty distributions will be in accordance with the previously signed “Contract Regarding the Treatment of Research Institute Information, Discoveries, and Inventions” (Appendix A)

2. Seeks permission from RISO, prior to any attempt to publish information related to an invention, software or other discovery. RISO will advise when this may be accomplished without compromising legal rights related to the Intellectual Property. Prior to publishing, the Inventor also has to seek the permission of the Client, if required by the contract, as well as comply with the requirements of the RI Conference and Publication Committee.

3. Section Manager or Academic Chair upon receipt of the invention disclosure document from the Inventor, reviews the disclosure for compliance, and determines the ownership of the disclosed invention, software, or other discovery as defined by the University Policy, and/or according to the terms of a controlling client contract. The Section Manager forwards the documents with his comments to the Center Director who following his review, signs the forms and forwards them to RISO. In the case of an Academic Department, the Chair following his review, signs the forms and forwards package to RISO.

4. Assigns a case number. Reviews the documents to affirm that the University has ownership of the Intellectual Property. If it is found that the Client shares the ownership with the University, the Client shall be notified of the potential patent.

5. Sends all relevant documents to the Vice-Rector for Applied Research (VRAR).

6. Transmits charges of Screening Committee to determine patentability of Invention to Host Unit with request to form Committee to review the case.

7. The Center Director or Academic Chair appoints a three member Screening Committee to review and determine the patentability of the invention, original software, or other discovery.

8. Determines whether the disclosed material is patentable. Patentability of an invention requires that it meet three basic criteria. (1) Novelty: The invention must be demonstrably different from publicly available ideas, inventions, or products (so called “prior art”). This does not mean that every aspect of an invention must be novel; new uses of known processes, machines, compositions of matter and materials for example are all patentable. Incremental improvements in known processes are also patentable.  (2) Non-Obviousness: The invention must not have been obvious to a person of ordinary skill in the area to which it pertains at the time the invention was made. This is usually demonstrated by showing that practicing the invention yields surprising, unexpected results. (3) Utility or usefulness: The invention must have some utility or usefulness, or be an improvement over existing approaches or products, and not just a subject for further research.

9. Sends the results of their deliberations to the Host Unit.

10. Center Director or Academic Chair forwards the recommendation of the committee with his input to RISO.

11. Forwards the collected information and documents to VRAR.

12. Reviews the documents and determines further action.

13. Prepares (if the request to seek protection is approved by the VRAR) the patent application(s), in consultation with the Inventor and the Host Unit.

14. Notifies (if the application has been rejected by the VRAR) the Inventor and the Host Unit of the rejection of the request, and executes the standard waiver agreement with the Inventor.

15. Offers technical drawings, scientific descriptions, and laboratory records that may be required by legal counsel in connection with the application.