Policy for Withholding a Graduate Thesis from Publication For Patenting Purposes and Contract Compliance

It is occasionally necessary to delay publication of a thesis for a limited period of time for the purposes of (a) protecting potentially patentable inventions and (b) complying with the terms of sponsored research agreements (such as prepublication review)[1].  A student’s degree requirements can still be fulfilled even though publication of the thesis is delayed[2]

The optimal way to protect intellectual property and adhere to sponsor agreement requirements is the formal submission to the Office of Technology Management (“OTM”) of a request to withhold a thesis for patent considerations and compliance with contractual terms.  This must be done prior to or concurrent with thesis deposit in the Graduate College and it delays the Graduate College’s transfer of the thesis to IDEALS and ProQuest/UMI Dissertation Publishing.  This mechanism provides an absolute ‘blackout’ of information contained in the thesis. The author, title, and abstract are not accessible in any way.  

Note, while the Graduate College also provides a mechanism for deferring publication of a thesis for up to 2 years, through the “closed access” option in IDEALS and through the “embargo” option in ProQuest, these options are not a substitute for a formal thesis withhold.  They do not guarantee the preservation of patent rights; nor do they enable you to comply with certain contractual obligations. 

Because the thesis title and abstract (in both IDEALS and ProQuest) are published soon after deposit (even if you have selected a deferred publication option) these published parts could limit the ability to obtain a patent or greatly narrow the scope of possible patent protection.

The Withholding method is the safest, since nothing is published.  Submission of a formal Withhold request assures the attention of the OTM so that the patenting and contracting issues are addressed.

 

Note, upon filing a Formal Withholding Request with the OTM, the Graduate College will not transfer the thesis until after the OTM has removed the withhold request.  Once the withholding is removed, any access and embargo options selected by the student at the time of deposit will then be applied to the thesis, which may further delay the appearance of the thesis to the public (if the student selected closed access and embargo options).


[1] The intellectual property terms of sponsored research contracts and grants, both Federal and private, usually require diligent disclosure and protection of inventions, both US and worldwide.  In addition, private contracts often contain prepublication review provisions, deferring publication for a period of time for the purposes of protecting intellectual property. 

[2] Office of Technology Management, 319 Ceramics Building, MC-243, 105 South Goodwin, Urbana, IL 61801

Procedure: 

 

The following is the procedure for processing requests to withhold a thesis from publication and determining the date for subsequent release of the thesis by the Graduate College to IDEALS and ProQuest.

1.   If it is determined that a withholding request is desired for contractual or patenting purposes, a Thesis Withholding Form (http://otm.illinois.edu/sites/all/files/files/thesiswithholdform-060310.pdf) should be initiated and signed by the Master’s Adviser or Dissertation Director, approved by the unit head and the student, and submitted to the OTM.  Requests should contain the full name of the student author, department, the complete title of the thesis, whether a Master’s or Ph.D., and the date of the award of the degree. The form should be completed prior to or at the time of submission of the thesis to the Graduate College.  The student should also inform the Graduate College at the time of submission that they have submitted a Withholding Form to the OTM.

2.   If the OTM agrees that such action is appropriate, a letter of concurrence will be sent to the Graduate College, the Dissertation Director, the unit head, and the student. 

3.   A thesis will normally be withheld for six months for the purposes of review and filing a patent application.  In some cases, there are extenuating circumstances which may require a longer withholding period.  Near the end of the six-month period, the OTM will notify the Dissertation Director that the request to withhold must be renewed or the thesis will be released for publication. 

4.   If the request to withhold is renewed, the thesis will be held for an additional six month period, after which time the OTM will check the status again.

5.   If, during the period a thesis is being held, it is determined that the subject matter is not patentable, the OTM will notify the Graduate College that they may release the thesis immediately following such decision.  If it is determined that the subject matter merits patent protection, as soon as notice is received that a patent application has been filed, the OTM will notify the Graduate College to release the thesis.  Every reasonable effort will be made to establish patentability and file a patent application as promptly as possible.

6.   When the OTM authorizes release of the thesis via a letter of notification to the Graduate College Thesis Office, copies of the letter will be sent to the Dissertation Director, unit head, and student.

7.   Should the student object to withholding the thesis for reasons of personal hardship (e.g., impairment of employment opportunities because of the inability to disclose research work to prospective employers), the OTM will work with the student and Dissertation Director to find an option to assist the student. This may include options such as arranging to have prospective employers review the thesis under a signed nondisclosure agreement or provide an edited/redacted version to the employer.

8.   The most effective means of avoiding delay in thesis publication is for the candidate and Dissertation Director to make timely disclosure of inventions to the OTM as they occur.  Inventions (if any) will normally be known before the thesis is written.  The time required to write and edit the thesis is usually sufficient to permit the evaluation of patentable results.

 If you have any questions regarding this policy, contact the Office of Technology Management, 217-333-6807.  See also the Graduate College Website Thesis Frequently Asked Questions at http://www.grad.illinois.edu/thesis-faqs.

November 2012

 

 

 

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