Guidelines for Intellectual Property Regarding Results of Joint Research with Companies
April 1, 2021
Director, Head Office of Enterprise Partnerships
National University Corporation Tohoku University
These Guidelines are to clarify Tohoku University’s fundamental position regarding
disposition of Inventions (including inventions, devices, creations, breeding, and othertechnical results that are the subject of patent rights, utility model rights, design rights,
trademark rights, circuit layout rights, and plant breeders' rights), Software Programs(including software programs and databases), and Know-How, created or made in thecourse of joint researches (hereinafter, "Joint Research") with Tohoku University(hereinafter, "TU") as well as applications for the aforementioned, and the obtained rights
thereof (hereinafter collectively referred to as "Intellectual Property").
As to the disposition of Intellectual Property resulting from Joint Research, TU will
discuss with a research partner company (hereinafter, "Partner Company") in accordancewith the Guidelines.
1.

Ownership of Rights
The ownership of rights relating to the research results (hereinafter, "ResearchResults") will be determined through mutual consultation between TU and Partner
Company upon confirmation of the actual contribution of respective researchers who wereinvolved in the creation of such Intellectual Property.
2.

Solely Owned Intellectual Property of TU
TU promotes the utilization of its solely owned Intellectual Property (hereinafter, "TU

Sole Intellectual Property") towards the social implementation thereof.
This will be achieved through implementation of such Intellectual Property bycompanies and thus, TU expects Partner Company to primarily exploit the IntellectualProperty that is the results of Joint Research even it is solely owned by TU.
TU, therefore, grants a first option to take a license under such TU Sole IntellectualProperty to Partner Company.

The option period will be a certain period of time andthe option will be free of charge during that period. Extension of the initial option
period is possible subject to a fee and TU will ask Partner Company to bear the expenses
for the application and maintenance of the TU Sole Intellectual Property.
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3.

Jointly Owned Intellectual Property
With regard to the Intellectual Property that TU and Partner Company jointly own(hereinafter, "Jointly Owned Intellectual Property"), the details of terms and conditions ofsuch will be discussed and determined in accordance with the “Options and Terms for
Jointly Owned Intellectual Property” below, taking a fair consideration into account about
the differences in positions of TU as a National University Corporation and Partner
Company as a for-profit company.
4.

Research Utilization and Use of TU Name
If Partner Company wishes to use the TU’s name or TU’s logo for production and/or salesof products, provision of services, or any other conducts utilizing the Research Results of
Joint Research, TU will review such use in accordance with the University policy.

Anagreement on the use will be concluded upon approval, which will be subject to a fee.

Options and Terms for Jointly Owned Intellectual Property
Option 1)

Assignment to Partner Company

Assignment of TU’s ownership share in the Jointly Owned Intellectual Property ispossible subject to a fee.
Option 2)

Exclusive or Non-exclusive License of Partner Company under following

Terms(1) If Partner Company desires to obtain an exclusive license under Jointly Owned
Intellectual Property, such license will be subject to a fee.
The exclusive license shall be subject to a provision that allows TU to grant a nonexclusive license to a third party, to prevent the Jointly Owned Intellectual Property,
the Research Results of Joint Research, from being withheld by Partner Company, inthe event Partner Company is deemed to have obtained such license for protective
purposes (known as “Defensive Patent”), or does not actively utilize the Intellectual
Property without fair and persuasive reasons.
With regards to the Jointly Owned Intellectual Property not actively utilized, TU
recognizes that some, such as materials, chemicals and drug development, requireconsiderable time, more so than others.

TU will consult with Partner Company forappropriateness of delay if any, considering Partner Company’s status and prospects
on commercialization. Furthermore, even if Partner Company opts not to take an
exclusive license, TU may regard that Partner Company is an exclusive state if the2Jointly Owned Intellectual Property is extremely difficult to be utilized by thirdparties, or if it is substantially restricted for TU to grant the license the Jointly Owned
Intellectual Property to companies other than the Partner Company, considering therelated technologies, and patents, as well as the market development and trend.
(2) Exploitation of Jointly Owned Intellectual Property by Partner Company is subject toroyalty payment even if it does not have an exclusive license, in light of the differencesin positions of Partner Company as a for-profit company and TU as a National
University Corporation which cannot commercially exploit Intellectual Properties.
(3) When a patent application is filed for a jointly made Invention as a Jointly Owned
Intellectual Property, TU asks Partner Company to bear all costs and expenses
required for filing application and maintenance after the patent registration of theJointly Owned Intellectual Property.

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