Pre-Filing
What is a patent?
A patent is a set of exclusive rights provided for an intellectual property / invention for a limited period of time.
What is the need of a patent?
A granted patent gives the owners exclusive rights over the invention and allow them to take legal action to stop others from making, using, importing or selling the invention without permission.
What are the different types of patents?
The answer depends on the patent office where the application is being filed. For example, the U.S. Patent office offers the option of ‘utility patent’ to cover the functional aspects of an invention, whereas, the ‘design patent’ covers aesthetic appearance of an invention.
Does KFUPM accept Design patents?
KFUPM till date has filed only one design patent. The decision is made on a case to case basis for e.g. if the design patent can add value to the IP protection in addition to a utility patent application.
What is the difference between an inventor and an author of a journal paper?
- Inventors – Individuals who contributed intellectually to the conception of the idea.
- Authors – Individuals who either collaborated or contributed ideas/labor/effort in completing various experimental tasks.
What happens when the number of authors on a journal article is not same as that on the invention disclosure form?
If one or more of the journal article authors is not included as an inventor on the IDF, the corresponding inventor needs to ensure that the omitted inventors provide a no-objection email to iao-dtv@kfupm.edu.sa. In the no-objection email, the omitted inventors should mention that they are aware of the submitted invention at KFUPM and they have no objection being omitted from the inventors’ list.
Why does your office requests for contribution of each inventor?
Incorrect inventorship can jeopardize the validity of a patent and the owner cannot enforce it (for e.g. during a dispute or litigation). In addition, as per university policy, sharing of license revenue is to be paid only to the inventors. So, it is important for our office to identify the inventors based on the given information.
What is the format of describing my invention for the purpose of submitting my request for patent?
There is no formal requirement to follow a format to submit your invention disclosure. However, the invention needs to be described with sufficient details for the notional person skilled in the art to carry out that claimed invention.
What is the purpose of asking questions related to market potential of invention?
At Innovation & Technology Transfer office we try to get a brief overview on the market potential of the invention prior to processing an invention disclosure for patenting.
Can I have co-inventors from other organizations/universities?
You may have co-inventors from other organizations/universities if they are involved in a contract/collaborative research with KFUPM. If it is not the case then:
i- Such inventors will be asked to sign a ‘Waiver form’ and get a ‘No Objection Letter’ (NOL) signed from their organization’s ‘Technology Transfer Office’ (office similar to ours).
ii- If the other organization/university cannot provide a NOL and claims ownership in the IP, then a formal Joint Invention Administration Agreement (JIAA) is needed between KFUPM and the other organization/university. JIAA would include terms about which party will manage patent prosecution and licensing to a third party and how patent expenses and license revenue will be shared between KFUPM and the other organization/university. In case a JIAA is required, the corresponding inventor is required to provide the contact details (email and phone number) of the technology transfer office (or equivalent) of the other organization/university.
Why you need a Waiver form and No Objection Letter (NOL) and who should sign them?
The waiver form and NOL is only needed if a co-inventor is not affiliated to KFUPM (faculty / staff / student) and the work is covered under any agreement such as contract/collaborative. This is to make sure KFUPM’s ownership rights are persevered in the intellectual property. The form is signed by the non-KFUPM inventor and the NOL is signed an authorized representative of the inventor’s employer.
Who can sign on the No objection letter?
No objection letter should be signed and stamped from an authorized representative of the organization. The authorized representative may be one of the following
- Director/Head of Technology Licensing office of the organization
- Director/Head of R&D section of the organization
- Or the Employee’s manager/head
I have published my research out comes, can I still apply for patent?
We can reply to this answer upon submission of your invention disclosure. Only US and Australian patent laws offers a one year grace period,first public disclosure, to file a patent application. On other hand, the patent rights in other countries are lost upon public disclosure.
What is considered as a ‘public disclosure’?
A public disclosure is any, non-confidential communication of an idea or invention. Contact our office with questions about your previous or planned public disclosures.
Public disclosures may include: conventional academic printed and online publications, abstracts, master’s theses, Ph.D. dissertations, open thesis defenses, presentations, poster sessions, department and campus seminars, information posted online and publicly available abstracts of funded grant proposals. Grant proposal abstracts should be high-level and tailored to prevent unwanted disclosure. Grant applications typically are not made public, although grant final reports can be available to the public and would be considered a public disclosure.
Post-Filing
What does the term “patent pending” mean?
The term is used to inform the public that an application for patent on that article is filed and pending in the Patent Office.
Who owns my patent?
Ownership depends on various factors such as inventorship, source of research funding, resources used. As a general principle, KFUPM claims ownership in an IP if its research funding or resources are utilized. KFUPM shall share or bear all the expenditure incurred in processing the patent application if it claims a joint or sole ownership of the intellectual property (however based on the terms of research agreement).
What is the difference between a published patent application and a granted/issued patent?
A patent application is published by the patent office after 18 months from the earliest priority date of the application. The publication of a patent application marks the date at which it is publicly available. It forms as prior art for patent applications worldwide and also places competitors on notice that you are developing technology in a certain area. However, a published patent application does not mean the patent is granted. The patent is granted after it is examined by the patent office and if the application complies with the requirements of the relevant patent office.
If a patent is filed and I have an improvement over this what can be done?
The improvement may be eligible for a Continuation–in-Part (CIP) application by claiming priority to the originally filed application (this is allowed only until the previous application is pending with the patent office).
What is the difference between a CIP application and Divisional application?
Continuation-in-Part applications are used when a new improvement is conceived or developed based on the earlier filed patent application.
A Divisional application is filed to overcome a Patent Examiner’s objection to plurality of invention in an earlier application. This means that more than one invention has been disclosed in the earlier application which is known as the “parent” application. The subject matter of the Divisional application must have been present in the “parent” and is then ‘divided out’ to form a separate application.
What is filing deadline refers to and is it permissible to disclose the idea before filing?
In most of the countries, any public disclosure prior to filing a patent application renders the invention Unpatentable. So, we highly recommend KFUPM inventors submit their invention disclosure to our office at least four months prior to any public disclosure, allowing sufficient time for us to file a patent application before the public disclosure (subject to our process).
What is the usual time for patent being granted?
There is no simple answer to this question. Usually it takes 2-4 years for a U.S. patent to be granted (if accepted by the patent office). The delay depends on the backlog of cases pending with the patent examiner.
Is there any financial compensation for inventors?
If a IP is licensed by KFUPM for commercialization, the eligible inventor can receive a share of revenue subject to KFUPM’s IP policy (refer Section 2.XI).
Does KFUPM offer any assistance to the KFUPM inventors in developing and marketing their patents?
‘Proof of Concept’ funding shall be provided to IPs to bridge the gap between the concept and a stage where the invention can attract interest of industry for commercialization.
Subject to an in-depth market assessment, potential inventions are routinely marketed to industry (potential companies) for possible collaboration for technology development and/or licensing.
Does the order of inventors listed on the patent have any effect?
Legally, the order of inventors does not affect their rights.
Contact
For more information on patent filing or processing, please contact our office
Innovation & Technology Transfer office,
Innovation Cluster building, Dhahran Techno Valley,
P.O. Box 5041, Dhahran 31261, Saudi Arabia.
Telephone: +966-13-860-7811 / 8147
Email: iao-dtv @ kfupm.edu.sa