〈日本知財学会誌〉Vol.1 No.1 ― 2004 : 31 ― 42

Technology Licensing andUniversity Research in Japan
Prof. Toshiko Takenaka, University of Washington School of Law

exploited because the government owned intellec-

1. Introduction

tual property rights resulting from the publicly
funded research in national laboratory institutions,

The Japanese Bayh-Dole Act was enacted in
1999 as part of the Industrial Revitalization
1

but had no mechanism to promote licensing thetechnologies.

Special Law . Since the Japanese economy has

Regarding research conducted in universities.

plunged into the current deep recession, theUniversity professors（inventors）owned theJapanese government has been looking for a mea-

intellectual property rights resulting from theirsure to revive its economy. By reviewing US legis-

publicly funded research, unless the rights result-lation from the eighties and early nineties, when

ed from research that falls into one of two excep-

the US was in a serious recession, Japan’s

tions:（1）specially funded inventions and（2）Ministry of Economy, Trade and Industry

inventions developed in special research facilities5.

（METI）was convinced that intellectual property

Due to the high cost and time-consuming process

related legislations encouraging technology trans-of procuring and licensing intellectual property

fer were the primary reason for the US recession

rights, Japanese university professors were sel-2

recovery . To follow the US example, the govern-

dom able to obtain intellectual property rights inment organized the Commission on Intellectual

their research results. To promote procurement of

Property Rights in the Twenty-First Century. In

intellectual property rights in research results andits report published in April 1997, the Commission

exploitation of their patents, the Commission pro-emphasized the need to promote exploitation of

posed to set up technology-transfer offices as liai-

technologies developed by universities andson offices in universities and national researchresearch institutions in order to promote theinstitutions. It also recommended development of3

development of breakthrough technologies .

a mechanism to transfer technologies promptly.

Despite the significant increase in the number ofThus, this article examines Japanese Bayh-Dolepatents issued to Japanese universities and

Act and technology transfer related legislations

research institutions, these institutions’ royalty

from the comparative law perspective and review

4

revenues have remained low . A very small por-the impact of enactment of these laws. It also

tion of patents issued to these institutions were

examines the current system for managing owner-

ISSN 1349 ― 421X
蘓 2004 IPAJ All rights reserved.

31

〈日本知財学会誌〉Vol.1 No.1 ― 2004

ship of intellectual property in university inven-

Japanese Bayh-Dole Act, the government retained

tions. It also examines technology transfer organi-patents and all intellectual property rights result-zations which promote both university-to-businessing from contracting research and developments.

transfer and business-to-business transfer. It con-The only exception to this rule was international

cludes with a discussion of challenges for Japanese

research projects where foreign governments oruniversities to successfully manage intellectual

non-profit organizations collaborated withproperty rights in university inventions.

Japanese contractors14.
The enactment of the Japanese Bayh-Dole Act

2. Japanese Bayh-Dole Actchanged the rule of ownership for inventions
developed by universities and research institu-

2.1. Industry Revitalization Law and Related

tions. The Bayh-Dole Act Chapter of the Industry
Revitalization Law 15 permits universities and

Laws
Responding to the Commission’s proposal, theresearch institutions to retain ownership of intel-

Japanese Bayh-Dole Act was enacted, aiming tolectual property rights arising from government

encourage research activities and promote the uti-

contracted research and developments under the

lization of inventions arising from research orfollowing conditions. First, universities anddevelopment supported by the Japanese govern-

research institutions must report an invention to

ment6. The subject matter coverage under thethe government without delay after disclosure

Japanese Bayh-Dole Act is broader than that offrom researchers16. Second, with respect to thethe US Bayh-Dole Act, because it covers not only

subject matter that universities and research insti-

patent eligible subject matter but also other types

tutions have acquired title, universities andof subject matter protected by other intellectual

research institutions must grant the government a

property rights. Such rights include（1）patentroyalty free license to exploit the subject matter if

7rights and rights for obtaining a patent ;（2）utili-

the government makes clear a reason that thety model registration rights and rights for obtain-

exploitation of the subject matter is necessary foring utility model registration8;（3）design regis-

the public interest17. Third, they must grant a

tration rights and rights for obtaining design reg-license to a third party if they have not exploited9

istration ;（4）copyrights for computer programs10

the subject matter for a reasonable period of timeand databases ;（5）semiconductor chip layout

without any excuse, and the government makes

and rights for obtaining semiconductor chip

clear a reason that the exploitation of the subject

11

rights ; and（6）seed and seedling registration

matter is necessary for the utilization of intellectu-

rights and rights for obtaining plant variety regis-

al property rights18.

tration rights12. Thus, the Act was enacted as part

The first condition parallels the “report require-of a separate law, the Industry Revitalization Law,ment” for the disposition of rights under US Bayh-instead of part of the Patent Law13.

Dole Act19. The second and third conditions paral-

However, the main function of the Japaneselel the “march-in rights” including compulsory

Bayh-Dole Act is very similar to that of the US

license provisions20. However, the Japanese Bayh-

Bayh-Dole Act. It aims to give ownership to uni-

Dole Act is much simpler than the US Bayh-Doleversities and research institutions and promote

Act. The Japanese Act does not provide for any

transfer of their technology to industry for com-restriction with respect to the entitlement of intel-

mercialization. Before the enactment of thelectual property rights as done by the US Bayh-32

Technology Licensing and University Research in Japan

Dole Act21. Further, the Act does not provide for alicense technologies to both domestic and foreignprohibition of assignment of rights22 and, regard-

profit and nonprofit organizations.

ing licensing of such rights, the Act does not pro23

vide for any small business preference or domes24

tic industry preference .

The Japanese Bayh-Dole Act does not provide
any requirement of compensation for inventors.
This is because the Patent Act provides a require-

These differences resulted from the broader

ment of compensation, thus a provision is unneces-goal of the Industry Revitalization Law rathersary28. Regarding the compensation for university

than the US Bayh-Dole Act. The US Bayh-Dole

professors, MEXT（ Ministry of Education,

Act aims to promote participation of small busi-

Culture, Sports, Science and Technology）publish-

ness firms in federally-supported research andes an instruction for compensating employee

25

development efforts . The Industry Revitalization

inventions and other intellectual property rights

Law aims to maximize business resources indeveloped by employees of MEXT29. The instruc-

Japan for recovery of Japan’s economy from reces-tion provides that when a patent right or right tosion26. Further, the Japanese Bayh-Dole Act pro-obtain a patent is transferred to the government,

vides that “the government can choose to refuse a

resulting from an application filed prior to thetransfer of patent and other rights” from contrac-

1987 Patent Law Revision, the government must27

tors . This suggests a broad discretion on the

pay to the inventor-university professor 4,500 yen

government to decide whether to allow contrac-

for each patent right or application in addition totors to retain intellectual property rights arising

the 4,500 yen for each claim included in the patent

from contracting research and developments.

right or application30. When a patent right or rightThus, it is not necessary to provide exceptions forto obtain a patent, resulting from an application

refusing to let contractors retain intellectual prop-

filed after the 1987 Patent Law Revision, is trans-

erty rights, because the government can simply

ferred to the government, the government must

exercise its discretion of refusal.

pay an inventor-professor 7,500 yen for each

In practice, when the government funds a uni-

patent right or application in addition to 7,500 yen

versity or research institute to engage contracted

for each claim included in the patent right or

research projects, it uses a uniform agreement toapplication31. The same rule applies when the gov-

execute a contract. The uniform agreement clari-ernment obtains a foreign patent right or a rightfies that the university or research instituteto obtain a foreign patent right. If the government

retains any intellectual property rights resulting

receives license revenues from the patent rightfrom the contracted research project. If it is nec-transferred by an inventor-professor, the govern-

essary, the government can change the term andment must pay the inventor according to the fol-

specify that intellectual property rights, resulting

lowing table32 :from the research projects, will be transferred to
the government.
The Japanese Bayh-Dole Act does not discrimi-

Revenues＜1,000,000 yen

50％ of revenues

Revenues＞
×25−1,000,000 yen （Revenues−1,000,000 yen）％＋5,000,000 yen

nate small business firms and nonprofit organizations from profit organizations and large corpora-

The Industry Revitalization Law also requires

tions. The Act allows profit organizations andthe Ministry of Economy, Trade and Industry

large corporations to retain patents and intellectu-（METI）and Ministry of Education, Culture,

al property rights. These contractors are free toSports, Science and Technology（MEXT）to33

〈日本知財学会誌〉Vol.1 No.1 ― 2004

implement measures to promote technology trans-

identifying the direction and conditions to set up afer of results arising from research activities intechnology transfer office within a university40.

universities to private industry through licenses

According to the guidelines, METI and MEXT

or assignments of intellectual property rights inreview and approve business plans41.

such results 33. Utilizing such measures, METI

Although anyone can create a TLO without anenacted（1）Law for Promoting University-

approval, METI-MEXT approved TLOs are enti-

Industry Technology Transfer（TLO Promotion

tled to advantages under the TLO Promotion34Law ）,（2）Improvement of the Deduction
35

Law. First, such TLOs are eligible for receiving

System of Incremental R&D Tax Credits （Fromgrants from METI, up to 30,000,000 JPY42. METI

1999）,（ 3） Law of Small and Medium-size

guarantees TLO debts with respect to approved

Business Innovation Research System（Japanesebusiness, which facilitates TLOs to obtain bank36

loans. Second, the Japanese Patent Law was

SBIR）（December 1998 ）, and a revised Patent
37

Law in 1998 and 1999 .

revised to make approved TLOs eligible for discount, exemption or deferral of patent annual feesand official fees for requesting examination 43.

2.2. TLO Promotion Law
The Law for Promoting University-Industry

Other intellectual property laws were also revised

Technology Transfer（TLO Promotion Law）

to make similar discounts for official fees available

aims to promote（1）the progress of industry andfor approved TLOs with respect to procurement

creation of new industry, and（2）research activi-

for other types of intellectual property rights.

ties through technology transfer of research

Further, approved TLOs are eligible to use gov-

results developed by universities and public

ernment-owned facilities such as space in national

research institutions to industry38. The Law pro-

universities without charge when they work atvides a definition of “technology licensing organi-transferring technologies developed by these uni-

zation”（TLO）as a business for arranging assign-versities. Finally, the Law of Small and Medium-ments, licenses and other activities of intellectual

size Business Innovation Research System44, wasproperty to appropriate private institutions, which

enacted to make it possible for small and medium

rights are owned by university professors andsize firms to receive exemption from investment

39

researchers, and private and public universities .

made for commercializing technologies transferred

According to the Law, TLO’s business includes

from universities.

（1）the discovery, evaluation and selection ofresearch results, which can be commercialized by

3. University Inventionsprivate institutions;（2）procurement, maintenance and enforcement of intellectual property

3.1. 1977 Science Council Draft Reportrights in such research results;（3）providing

The Japanese Bayh-Dole Act primarily relates

information about such research results;（4）tech-

to intellectual property rights resulting from gov-

nology transfer of such intellectual property rights

ernment contract research projects. Thus, intellec-

to industry; and（5）distribution of revenues

tual property rights resulting from research andresulting from such technology transfer. The TLO

developments conducted by university professors,

Promotion Law requires METI and MEXT devel-

as course of their regular responsibility, are out-

oping guidelines for encouraging transfer of uni-side the scope. Even if university professors are

versity developed technologies to industry bygovernment employees and their research is con-34

Technology Licensing and University Research in Japan

ducted by publicly funded research funds andsupervising student research projects and engag-

facilities, their intellectual property rights usually

ing their own research projects, but did not view

belong to the inventors（professors and researchers）,

making inventions as part of their duties. Thus,

instead of their employers（universities）.

unless any special circumstance exists, university

Japanese universities follow a MEXT notice,inventions do not qualify for employee’s invention.

clarifying a policy regarding how to handle

The Council set forth two types of inventions

45

patents and other intellectual property . The

that results from such special circumstances:（1）notice was based on a draft report prepared byinventions resulting from research activities fund-46

the Science Council in 1977 . In determining the

ed by a special research budget from theownership of university inventions, the council

Japanese government with a specific research

focused on the goal of promoting research andtopic given by the government in application tech-47

education, and maintaining the freedom of study .

nology 50 ; and（2）inventions resulting from

Also, when the draft report was published, it was

research activities conducted in special researchvery unlikely that scientific research done by uni-facilities owned by the government, such as a

versity professors resulted in subject matter ofnuclear reactor and fusion reactor, with a special

intellectual property rights because computer andtopic given by the government in application tech-biotechnology industries had not fully developed

nology 51 . Thus, university professors andin 1977. Thus, the Council paid very little attention

researchers retain the ownership of inventions

to the commercialization of inventions developed

developed under the ordinary course of researchby university professors. As a result, the Council

activities and educational instructions. However,adopted an approach that limits the opportunities

these professors can offer to transfer ownership offor universities to obtain ownership of inventions

such inventions if they prefer.

from their professors.
3.3. Procedure under 1978 MEXT Notice
3.2. Ownership Rule under the 1977 MEXT
Draft Report

In 1978, MEXT adopted the ownership rule
under the 1977 draft report and sent out a notice

The 1977 draft report made clear the principle

to national universities52. This notice was effectivethat professors should retain ownership of their

until it lost influence when national universities

inventions. The Science Council interpreted theacquired independent legal status as of April 1,

employee invention provision in the Patent Act

2004. The notice requires universities to prepareand clarified which inventions constitute the defin-

rules and procedures for handling intellectual48

ition of the employee invention . Japanese Patent

property rights in university inventions53. Such

Law prevents employers from contracting withrules and procedures must impose a duty on pro-their employees to transfer ownership of inven-fessors to report the inventions that fall under thetions before completion, unless such inventions fall

two categories of employee invention to the head49

into the definition of “employee invention” . To

of universities. It also requires universities toqualify as an “employee invention,” an invention

organize an invention committee to determine

must be within the scope of business and thewhether the government should retain the owner-

employee’s act that results in the invention as

ship of the inventions developed by the university

part of the employee’s duties. The Science Council

professors. The duty of reporting an invention

viewed professor duties to include teaching andapplies not only to inventions that clearly fall into35

〈日本知財学会誌〉Vol.1 No.1 ― 2004

the two categories of employee inventions, butalso to those which appear outside the two cate-

3.4. Proposed Changes for University
Inventions

gories so the invention committee can decide

In 2002, MEXT organized a working group onwhether an invention falls into the two cate-

intellectual property, and published a report to54

gories .

clarify the policies relating to intellectual property

An invention committee’s responsibility includes

rights in university research and developments57.

not only a decision of ownership by the govern-

Reflecting the changes in circumstances surround-ment, but also a decision of patent and other intel-

ing universities and the policy announced by thelectual property procurement. Since JapaneseJapanese Government on national intellectual

patent law follows the first-to-file principle, which

property strategies, the Working Group redefinedrequires the novelty of the invention as of theuniversity missions. It made clear that the contri-

application date, it is necessary to decide whether

bution to society by commercialization of universi-

to file an application with the JPO before inven-ty inventions is one of the missions for Japanesetion publication. To proceed to the decision quick-

universities. University professors must contributely, MEXT’s notice suggests:（1）creation of anto this mission through, not only development of

invention committee for each department, center,inventions but also protection and commercializa-

and program;（2）development of a simple formtion of their inventions. Commercialization of

to report an invention;（3）frequent meetings ofinventions also brings funds for engagement of

the committee upon submission of the invention

further research and developments.

report and other necessary measures to accelerate
55

filing process if it is necessary to file quickly .

Reflecting this mission, the IP Study Working
Group concluded that the current rule to give

Although the rule and procedure in 1978 MEXT

ownership to professors does not work well for

Notice applies only to national universities, mostcommercializing university inventions58. This isprivate universities adopted the same rule andbecause the recent enactment of the Japaneseprocedure for handling university inventions.

Bayh-Dole Act and the TLO Promotion Law madeHowever, despite that the notice encourages fre-it possible to establish a mechanism within a uni-quent meeting of invention committees, Japaneseversity to procure and manage intellectual proper-

universities seldom held invention committees,ty. The group proposed to adopt a rule to giveand thus the mechanism for handling intellectual

ownership of inventions to universities so that uni-

property in university inventions did not function

versities can use their mechanism to manage intel-

56

as aimed by the 1978 notice .

lectual property and promote transfer of technolo-

The rule and procedure in the 1978 MEXT

gies to industry through licensing. This view was

Notice does not apply to students. Because stu-

endorsed by IP Headquarters in Cabinet. Thus

dents are not employees of professors or universi-

many Japanese universities adopted the IP owner-

ties, their inventions are outside the scope ofship policy suggested by the Working Group.

employee inventions. Thus, professors and univer-In short, it is likely that Japanese universities

sities can contract with them to transfer invention

will shift to the US model where each university

ownership before invention completion.

adopts it own intellectual property policy and clarifies the scope of inventions that fall into the definition of employee invention 59 . As part of an
employment contract between professors and uni-36

Technology Licensing and University Research in Japan

versities, such scope should be clarified60. Throughtransfer of ownership in university inventions, uni-

4. Impact of the Bayh-Dole enactment

versities should procure and manage intellectual
property in these inventions under a uniform poli-

Although it is too early to make an impact

cy adopted by the university, to not only fulfill theassessment from the enactment of the Japanese

duty under Patent Law Article 35, but also to giveBayh-Dole Act, MEXT’s statistics indicate a signif-

incentives to professors to develop inventions.

icant increase in the number of collaborative

Universities should adequately compensate profes-

research projects between universities and indus-

61

tries in 2000 and 2001 69. There is a particularsors for their inventions .
Further, with respect to inventions made byincrease in the field of biotechnology after the

students, the group also suggests to manage theirenactment of the Bayh-Dole Act, furthermore, theinventions if the invention results from researchnumber of invention reports, as well as patentactivities supervised by professors or engaged inapplications filed with a private institute have

university facilities62. If a student is employed by

drastically increased after the enactment. The

the university, the university should contract tonumber of patent applications filed by Japanesetransfer the ownership of the invention as anuniversities has significantly increased since the63

employee invention . If a student is not employedenactment of Japanese Bayh-Dole Act70, particular-

by the university, the university should contract

ly, the number of applications filed by technology

with the student for an assignment of the inven-licensing organizations has increased from 16 in

64tion outside the scheme of employee invention .

1998 to 699 in 200171.

3.5. National Laboratories

5. Technology Transfer Organizations

Inventions made by researchers-employees ofnationallaboratories

fall

into

employee65

inventions . Each national laboratory adopts its

5.1. University/Academic Technology
Transferown rules for handling employee inventions andJapan’s METI and the Japanese Patent Officeclarifies the scope of duties and compensation for（JPO）, provides a variety of measures to encour-66

invention transfer . For example, the National

age procurement and management of intellectual

Institute of Advanced Industrial Science andproperty on fruits resulting from research andTechnology（AIST）67 adopted rules for handlingdevelopment activities in universities and academ-

employee inventions, which makes it clear that

ic research institutions. In addition to the advan-

the government owns a right in an invention thattages provided under the TLO Promotion law 72,

falls within the definition of an employee inven-

the JPO send, at their expense, intellectual proper-

tion. The rules require inventors to report suchty advisors to facilitate establishment of technolo-

inventions to their supervisors. When a report isgy license offices in universities and research

filed regarding an employee invention, a right toinstitutions73. Intellectual property advisors are

obtain a patent to the invention is transferred tothose who worked in patent and legal depart-the government. The AIST compensates thements of Japanese companies and have experiencetransfer of employee invention according to thein procuring and licensing patents and other intel-

same scheme as the MEXT summary for compen-

lectual property. These advisors train staff in

68

sating their employees .

technology transfer offices regarding patent appli37

〈日本知財学会誌〉Vol.1 No.1 ― 2004

cation preparation, conduct prior-art searches, andtechnology-licensing corporation and market theirdevelop a system within the universities to discov-technology nationally and internationally.

er patentable subject matter and file patent appli-

An example of the second type is Kansai TLO,

cations. Further, the JPO also send, at their own

which was established to serve universities andexpense, patent attorneys who give legal advice inresearchers in the Kansai region（great Osaka/

licensing and litigation.

Kyoto area）78. Members are faculty and researchers

In addition to the discount of patent annual feesof national and private universities in the Kansai

and examination official fees under the TLO pro-area, including the University of Kyoto

motion law, the JPO accelerates application exami-（National）, University of Osaka（National）,

nation from the MEXT and METI approved TLO

Ritsumeikan University（Private）, and other uni-

without charge, if a petition explaining the neces-versities. Kansai TLO business goes beyond intel-

sity of prompt examination is filed. However, thislectual property procurement and management,

74

system has not been extensively used .

and facilitates technology entrepreneurship.

The JPO frequently sponsors seminars on pro-Working with Kyoto Research Park Corporation

curement and management of intellectual proper-

and a group of venture capitalists, Kansai TLO

ty and encourage universities to develop IP cur-helped75

university

facultymembersandriculum in both legal and other departments . It

researchers to start a technology startup andsends their examiners to lecture in these universi-

transfer technologies to these startups.

ties and speak at the seminars. Further, it distrib-

The Tokyo Institute of Technology（TIT）

utes a variety of publications to promote technolo-

TLO is an example of the third type79. TIT’s TLO

gy transfer between universities and industries.

is based on the alumni foundation for the TokyoTLO in Japanese universities are classified into

Institute of Technology and obtained TLO

four types based on their organization. The first

approval to start technology transfer. The Waseda

type is established as a corporation（Kabushiki

University TLO is an example of the fourth type80.

Kaisha）or limited corporation（Yugen Kaisha）,

Approved TLOs and the number of licenses towhich are incorporated based on investments bytransfer technology are as follows : Indicated inuniversity professors and researchers. Many

the previous page.

TLOs for national universities adopted this type oforganization76. The second type is joint venture
between universities and private sectors. The

5.2. Business to Business Technology
Transfer

third type is existing corporations which expand-

The METI and the JPO also promote business-ed their business to start technology transfer. The

to-business technology transfer and createdfourth type is an organization within universities.

the Japan Technomart foundation in 1985 81 .

An example of the first type is CASTI, which

Technomart facilitates business-to-business tech-handles intellectual property in research andnology transfer through a registration systemdevelopment, developed by faculty members andwhere a party, who wants to license a technology,

77

researchers at the University of Tokyo . CASTI’s

registers his intellectual property rights. However,business includes intellectual property procure-

to obtain a license of these registered rights, ament, and licensing and technology consulting

party must subscribe for membership and pay

relating to the transferred technology. In addition,

annual fees. Thus, Technomart encourages tech-

CASTI collaborates with Recruit Japan, a private

nology transfer only to a group of parties who can38Technology Licensing and University Research in Japan

Year of
Approval
1998

’99

’00

’01

’02

Name of TLO

Affiliated Universities License82

Center for advanced Science &Technology Incubator（CASTI）

University of Tokyo

43

Kansai TLO

Kyoto University
Ritsumeikan University

28

Tohoku Techno Arch

Tohoku University and otheruniversities in Tohoku area

56

Nihon Univ. Int’l Industry
Technoligy Business Center

Nihon University

9

Institute of Tsukuba Liaison Co.Ltd.

Tsukuba University

3

Waseda University Intellectual
Property
CenterWaseda University

11

Tokyo Institute of Technology TLOTokyo Institute of Technology

25

Keio University Intellectual Property
CenterKeio University

27

Yamaguchi TLO

Yamaguchi University

8

Hokkaido TLO

Hokkaido University

10

The New Industry Research
Organization

Kobe University etc.

11

Nagoya Industrial Science ResearchInstitute

Nagoya University etc.

6

Kyushu TLO Co. Ltd.

Kyushu University

6

Tokyo Denki Univ. TLOTokyo Denki Univ.

0

Yamanashi TLO

Yamanashi Univ.; Yamanashi
Medical Univ.

2

Tama TLO

Kougakuin Univ., Toyo Univ.
Tokyo City Univ. etc.

2

Meiji Univ. Intellectual Property
CenterMeiji University

1

Yokohama TLO

Yokohama National University
Yokohama City Univ. etc.

0Technology Network Shikoku

Tokushima Univ. Kayama Univ.
Ehime Univ. Kochi Univ. etc.

1

The Foundation for the Industrial
Science

Univ. of Tokyo（Research Institutefor the Industrial Science）

8

Osaka TLO

Osaka University

0

Kumamoto Technology and Science
Foundation

Kumamoto University etc.

0Tokyo University of Agriculture andTechnology TLOTokyo University of Agriculture andTechnology

4

Niigata TLO

Niigata University etc.

0

Hamamatsu Science and Technology
Foundation

shizuoka University etc.

0

Kitakyushu Academic Promotion
Foundation

Kyushu Institute of Technology

1

Mie TLO

Mie University−

39

〈日本知財学会誌〉Vol.1 No.1 ― 2004

afford to pay the annual fees.

technologies to Japanese industry. However, theTo extend technology transfer opportunities,

government does not see the result sufficiently.

METI and the JPO adopted a policy for promoting

Japan’s Prime Minister Junichiro Koizumi orga-

patent distribution in 1997, and provide a variety

nized Strategic Council of Intellectual Propertyof support to promote businesses, which include

and started an extensive review of current intel-

academic-to-business as well as business-to-busi-

lectual property protection and system to encour-83

ness . A survey conducted by the JPO in 1999,

age innovation88. The Council has its own secre-

revealed that 69%（660,000）of all Japanesetariat, and the secretariat is led by a former JPO

patents have never been exploited by the patentcommissioner, Mr. Hisamitsu Arai, who achievedowner, and in 51.5%（340,000）of the unexploited

an extensive patent law revision, including a revi-patents the patentee is willing to grant a license.

sion to increase patent infringement damages. One

To reduce the number of unexploited patents, theof the Council’s focuses is technology transfer of

JPO dispatched patent distribution advisors touniversity inventions to encourage creation ofmatch a party who needs a certain technology

new business and technology89.

with a party who can provide the technology andBased on the outlines, on July 8, 2003, thefacilitate technology transfer between the parties.

Council published detailed plans for promoting

The number of licenses executed through thecreation, protection and utilization of intellectual

facilitation of technology transfer by patent distri-property90. Among actions that the government

bution advisors has increased from six in 1997 towill take to promote creation and utilization of

841478 in 2001 . Among the parties who provide

intellectual property rights developed by universi-

technologies, TLOs in universities and nationalties is selecting research proposals which maylaboratories occupy 41%, which is expected to fur-result in more intellectual property rights. The

85

ther increase . Of the parties who received tech-government plans to review activities at the exist-

nologies, 76% are small business firms and 22%

ing TLOs and concentrate its funding on selected

86

TLOs. It will also encourage creation of technolo-

are large business firms .
Further, the JPO maintains a database listing

gy incubator centers within universities. To facili-

patents for which the patentee is seeking a license

tate TLOs to file applications for subject matters

87

opportunity . Any party can register her patent

which are presented at science meetings in aby posting the technology information and license

timely fashion without losing the novelty, JPO fol-conditions. A party can also post technology

lows the example of US patent law and adopts anneeds. The database is open to the public on-line

expansive grace period and provisional applica-

so anyone can obtain access to the posted informa-tion.

tion without charge. The JPO also sponsors a vari-

Despite these supports from JPO and theety of seminars promoting technology transfer

Japanese government, none of the Japanese uni-

and trains technology license managers.

versities’ TLOs is self-sustaining because the costs
for filing and prosecuting patent applications are

6. Conclusion: Future and Challenges

much more expensive than revenues earned bylicensing their technologies. Many Japanese TLOJapanese Bayh-Dole Act successfully increased

officers wonder if there will ever come a time

the number of applications from universities andwhen any of the Japanese TLOs will be self-sus-

made universities ready for transferring theirtaining. After all, many of the US universities’40Technology Licensing and University Research in Japan

TLOs are not self-sustaining either. They losemoney by filing applications for inventions thatare unable to find licensees. Since drug patents
are the ones that bring money to the universities,
universities which have no medical school wonder
how they can raise money from their technologies
to balance the prosecution budget. These
Japanese TLOs will face a serious challenge when
the government stops the funding to support TLO
activities.
However, even failing to balance the budget, thebenefit of technology transfer to the society istremendous : creation of new business andemployment opportunities and education opportunities for students through participation in TLO
activities. In short, the Japanese government and
TLOs should focus more on these social benefits
from university technology transfer than financial
benefits brought by university technology licensing. After all, the university TLOs’ mission shouldbe very much different from license offices of theindustry. Their mission should be to create newtechnologies and taking over the risk of commercializing technologies, which is unlikely for theindustry due to a grave risk involved in commercialization. At least, Japanese TLOs can takeadvantage of the experience at US TLOs andlearn from their failures and successes.
1 Sangyou Katsuryoku Saisei Tokubetsu Sochiho, Chapter 3,
Art. 30 to 33, Japanese Law No. 131 of 1999. General information about the law is available in English at: http://
www.meti.go. jp/ english/information/data/cIP9972e.html,（Last Visited 11/21/02）.
2 INDUSTRIAL PROPERTY RIGHT COMMITTEE, JAPANESE PATENT OFFICE, TOKKYOHOU TOU NO KAISEI NI KANSURU TOUSHIN（Invitation of Comments on
the Proposal for Revising Patent Law and Other Industrial
Property Laws）10（Dec. 16, 1997）.
3 COMMISSION ON INTELLECTUAL PROPERTY RIGHTS IN THE TWENTY FIRST CENTURY, TOWARD THE ERA OF INTELLECTUAL PROPERTY CREATION : CHALLENGESFOR BREAKTHROUGH（April 7, 1997）. This report is available on ―line at www.jpo ― miti.go.jp/pate/repo/rep21eng.doc.
4 Id. at 19.
5 National Academy of Science, Report regarding how to handle
patents and other intellectual property rights of inventions
made by university professors and researchers（June 1977）.
More detailed discussions on these inventions are included ininfra notes 51 and 52.
6 Industrial Revitalization Law, supra note 1, Art. 30, Paragraph 1
7 Patent Act, Law No. 121 of 1959.

8 Utility Model Registration Act, Law No. 123 of 1959.
9 Design Registration Act, Law No. 125 of 1959.
10 Copyright Act, Law No. 48 of 1970. Traditional works ofauthorship, such as literary and music works are excluded
from the scope of Japanese Bayh Dole Act.
11 Law concerning Semiconductor Integrated Circuit Layout,
Law No. 43 of 1995.
12 Seed and Seedling Act（Japanese Plant Variety ProtectionAct）, Law No. 83 of 1998.
13 The Bayh Dole Act and other technology transfer related legislations were enacted to amend U.S. Patent Law. For
detailed discussion of U.S. Bayh Dole Act and the U.S. technology transfer system, see Robert Kneller, University ―Industry Cooperation and Technology Transfer in Japan
Compared with the United States : Another Reason forJapan’s Economic Malaise? 24 U.Pa. Int’l Econ. L. 329（2003）; Rebecca S. Eisenberg, Public Research and Private
Development: Patents and Technology Transfer inGovernment-Sponsored Research, 82 Va. L. Rev. 1671.
14 International Research Collaboration Promotion Act, Law No.
57 of 1996. Law of Enhancing Research and Development
Structure for Industrial Technology, Law No. 33 of 1998.
Both laws were revised upon the enactment of the Japanese
Bayh-Dole Act in 1999.
15 Id. at Chapter 4: Promotion of Research Activities（Art. 30 toArt. 33）.
16 Id. at Art. 30, Paragraph 1, Item 1.
17 Id. at Art. 30, Paragraph 1, Item 2.
18 Id. at Art. 30, Paragraph 1, Item 3.
19 35 U.S.C., § 202（c）（1）.
20 35 U.S.C., § 203.
21 35 U.S.C., § 202（a）. The Act prevents contractors from taking the ownership of intellectual property rights if one of three
conditions exits.
22 35 U.S.C., § 202（b）（7）（A）.
23 35 U.S.C., § 202（b）（7）（C）.
24 35 U.S.C., § 204. However, a METI’s new model contract forgovernment agencies includes a Japan manufacturing preference clause. Kneller, University-Industry Cooperation, supranote 13, at 426.
25 35 U.S.C., § 200.
26 Industry Revitalization Law, supra note 1, Art. 1.
27 Id. Art. 30, Para. 1.
28 JAPANESE PATENT ACT, Art. 35.
29 See, http://www.mext.go.jp/a̲menu/shinkou/sangaku/sangakuc/030201a.htm.
30 Id. Art. 2.
31 Id.

Id. Art. 3.
Id. Art. 31.
Law No. 52 of 1998.
Law No. 132 of 1999.
Law No. 18 of 1999.
Law No. 51 of 1998; Law No. 41 of 1999.
TECHNOLOGY TRANSFER PROMOTION LAW, Article 1.
TECHNOLOGY TRANSFER PROMOTION LAW, Art. 2.
TECHNOLOGY TRANSFER PROMOTION LAW, Art. 3.
TECHNOLOGY TRANSFER PROMOTION LAW, Art. 4.
TECHNOLOGY TRANSFER PROMOTION LAW, Art. 6.
I NDUSTRY R EVITALIZATION L AW, Art. 32 and Art. 33. T ECHNOLOGY
TRANSFER PROMOTION LAW, Art. 12 and Art. 13.
44 Law No. 18 of 1999.
45 MEXT, Notice regarding How to Handle Patents and OtherIntellectual Property Rights in inventions and other subject
matter developed by professors and other members of universities, 1978. For IP ownership rules and procedure regarding
industry-university collaborative-research under this notice,see Kneller, University-Industry Cooperation, supra note 13,
32
33
34
35
36
37
38
39
40
41
42
43

41

〈日本知財学会誌〉Vol.1 No.1 ― 2004at 365.
46 Science Council, Draft Report for Handling Patents and OtherIntellectual Property Rights in inventions and other subject
matter developed by professors and other members of universities, June 1977.
47 For the process to prepare the report see, Yoshinobu
Someno, “ The Criterion of Employee’s Invention ” for the
Scientific Researches and its Basic Character, Japan
Association of Industrial Property, 4 ANNUAL OF INDUSTRIAL PROPERTY LAW, 125（1981）.
48 PATENT ACT, Art. 35. See infra at note 29.
49 PATENT ACT, Art. 35, Para. 1.
50 Id. Criterion, Art. 4 Para. 1（1）.
51 Id. Criterion, Art. 4 Para. 1（2）.
52 1978 MEXT Notice, supra note 47, at Art. 1.
53 1978 MEXT Notice, supra note 47, at Art. 2.
54 Study Group Regarding How to Handle Outside Funding for
National Universities etc. Laws Forms and Materials
Necessary for Research Collaborations between Universities
and Industry, 69（4ed., 2002）.
55 1978 MEXT Notice, supra note 47, at Art. 2（3）.
56 Japan Society of Kansei Engineering, IP Study Group,
Employee Invention and Intellectual Property National
Strategies, 185（2002）.
57 Report available at : http://www.mext.go.jp/b̲menu/shingi/
gijyutu/gijyutu8/toushin/021101.htm.
58 Id. the MEXT working group report, Section II.
59 A summary proposal prepared by the working group available
at : http://www.mext.go.jp/b̲menu/shingi/gijyutu/gijyutu8/
toushin/021102q.htm.
60 Id. Summary II, 2（1）.
61 Id. Summary II, 2（2）.
62 Id. Summary II, 2（4）.
63 Id.
64 Id.
65 IP Study Group, Employee Invention and Intellectual Property
National Strategies, supra note 56, at 161.
66 For technology transfer from national laboratories, see
Kneller, University ― Industry Cooperation, supra note 13, at
409.
67 Information on AIST available at : http://www.aist.go.jp/
index̲en.html.
68 MEXT Summary, supra note 45.
69 See, http://www.mext.go.jp/a̲menu/shinkou/sangaku/index.
htm.

42

70 JPO, 2002 Patent Administration Annual Report, 61（2002）.
71 Id. at 62.
72 Supra note 37.
73 JPO, 2002 Patent Administration Annual Report, 63（2002）.
74 Less than 1% of applications filed by the approved TLOs
requested accelerated examination in 2001. Id . at JPO
Annual Report, 64.
75 Id. at JPO Annual Report, 65.
76 National universities adopted this type due to the complexityof ownership issues and restrictions on government employees. However, as of April 1, 2004 Japanese national universities have become a type of independent administrative
agency, which brought changes to the ownership and TLO
structures. See, Kneller, University ― Industry Cooperation,
supra note 13, at 404.
77 CASTI’s English home page is at : http://www.casti.co.jp/e/index ― e.html
78 Kansai TLO’s home page is at http://www.kansai ― tlo.co.jp/.
79 TIT TLO’s home page（Japanese only）is http://www.titech ―tlo.or.jp/index̲m4.html
80 Waseda TLO’s home page（Japanese only）is http://www.
waseda.ac.jp/gakugai/index1.htm
81 Information of Technomart available at: http://www.e ― technomart.jp/
82 The number of licenses executed as of July, 2002. JPO
Annual Report, supra note 57, at 64.
83 Information on the policy available at: http://www.jpo.go.jp/
ryutue/ryutue.htm
84 Annual Report, supra note 57, at 70.
85 Id.
86 Id.
87 The database address is: http://www.ryutu.ncipi.go.jp/db/
index.html
88 http://www.kantei.go.jp/foreign/policy̲e.html
89 Intellectual Property Policy Outlines available at: http://
www.kantei.go.jp/foreign/policy/titeki/kettei/020703taikou̲e.
html
90 Strategic Promotion for the Creation, Protection, andExploitation of Intellectual Property. English translation isavailable at: http://www.kantei.go.jp/foreign/policy/titeki/kettei/030708f̲e.html