POLICY FOR WITHHOLDING GRADUATE THESES FROM PUBLICATION TO PREVENT PREMATURE DISCLOSURE OF POTENTIALLY PATENTABLE SUBJECT MATTER

            The intellectual property terms of sponsored research contracts and grants, both Federal and private, usually require diligent disclosure and protection of inventions.  Under U.S. law, an inventor must file a patent application in the U.S. Patent and Trademark Office within one year after the invention has been published (or publicly used or sold) to be eligible for patent protection; most foreign countries require that the patent application be filed before any public disclosure.  The University accepts the obligation to protect potentially patentable subject matter from premature public disclosure in order to preserve entitlement to patent protection while the technology is being evaluated.

            In order to fulfill its contractual obligations, and to adhere to the policy stated in the General Rules, it is occasionally necessary for the University to delay publication of a thesis which contains potentially patentable information for a limited period of time in order to ensure the availability of worldwide patent protection.  A student’s degree requirements can still be fulfilled even though publication of the thesis is delayed.  Submission of a request to the Office of Technology Management (“OTM”)  to withhold a thesis for patent considerations must be done prior to or concurrent with thesis deposit in the Graduate College, in order to delay the Graduate College’s release of the thesis to IDEALS and ProQuest/UMI Dissertation Publishing. (Note: The University does not submit master’s theses to ProQuest.  At the time of deposit with the Graduate College, the student may choose additional embargo options, which will take effect after the thesis has been released from withholding and will further delay the appearance of the thesis in IDEALS and ProQuest.)   

The following guidelines describe 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. A request to withhold a thesis 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 OTMfor approval.  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.(Please use the Thesis Withholding Form, below)
2. If the OTM agrees that such action is appropriate, a letter of acknowledgment and 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 three 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 three-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.  Strong and convincing arguments by the Dissertation Director and the unit head must be provided to justify further delay.
4.  If the request to withhold is renewed, the thesis will be held for an additional three month period, after which time the OTM will check the status again.  OTM may approve up to only three such extensions of time for patenting considerations (~ one year total withholding period.).
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 and 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 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, 3-6807.  See also the Graduate College Website Thesis Frequently Asked Questions at http://www.grad.illinois.edu/thesis-faqs.