26

Necessity of Giving Special Consideration to Researchat Universities, etc. in the Patent Law System
Research Fellow: Kyoko Takada

The research environment and forms of research at universities and public research
institutes (hereinafter referred to as “universities, etc.”) have been rapidly changing. Universities,
etc. have become deeply committed to the industry as a result of their exploitation of researchachievements as intellectual property rights and strong promotion of returning researchachievements and research functions to society through industry-academia collaboration.
Consequently, it is impossible to deny the possibility that universities, etc. will become subject toclaims of patent rights.
Therefore, this research examines the necessity of giving special consideration in the patentlaw system in terms of performance of research and education at universities, etc. Specifically,
actual condition surveys were conducted with regard to changes in the relationships between
universities, etc. and the industry, the relationships between universities, etc. and researchers atuniversities, etc., and universities as entities exercising rights, in light of the public interest
nature of research at universities, etc. and requests of society for such research, as well aschanges in the industrial structure and increasing social importance of intellectual property, andthe survey results were analyzed. The results of the analysis and examination revealed thenecessity of giving special consideration to research at universities, etc. in the patent law system.

I

Introduction
Research)(Backgrounduniversities, etc. to universities, etc.,
development of university intellectual
property headquarters, and conversion ofnational universities to incorporated agencies.
Universities, etc. have come to have a deep
and forward-looking relationship with theindustrialworld
bypromotingindustry-academia collaboration based on
joint research and commissioned researchthrough active exploitation of researchachievements as intellectual property. As aresult, a situation is expected to occur inwhich universities, etc. become subject toclaims of patent rights. In order to cope withsuch a situation, it is necessary to conduct
actual condition survey on changes in therelationships between universities, etc. andthe industry, the relationships between
universities, etc. and researchers atuniversities, etc., and universities as entities
exercising rights, in light of the public
interest nature of research at universities,
etc. and requests of society for such research,of

The research environment and forms ofresearch at universities and public research
institutes(*1) (hereinafter referred to as the“universities, etc.”) have been rapidlychanging. Under the science and technology
creation-based nation policy, started with the
Basic Act on Science and Technology in 1995,
the intellectual property-based nation policy
was advocated, and various policies werecarried out to bring changes to universities,
etc., such as increase in joint research
projects and commissioned research projects
throughindustry-academia(-government)
collaboration (hereinafter industry-academia
collaboration
includesindustry-academia-government
collaboration), establishment of university
technology
licensingorganizations(university TLOs), shift to the principle of
attributing
researchachievementsof(*1) In this report, universities and public research institutes refer to universities, inter-university research institutes, colleges of technology,
national institutes engaged in R&D, public test and research institutes, and special corporations and incorporated administrative agencies engaged
in R&D in Japan.

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necessary to examine a comprehensive
solution with regard to the infringement ofpatent rights in terms of working of patented
inventions in research at universities, etc. aswell as demands for injunction and claims fordamages due to such infringement, taking
into account the public interest nature ofresearch and the fairness required for
management and operation. The third pointis the necessity of considering thesignificance of the provision on exception to
the effect of a patent right under Article 69(1)of the Patent Act in the present day.
Therefore, this research clarifies legal
problems, that is, what are the problems in
relation to patented inventions that are
worked in the course of research atuniversities, etc. and in what circumstances
the problems occur, through analysis of facts,and examines the necessity of giving special
consideration to research at universities, etc.
in the patent law system, focusing on thethree problems cited above.

as well as changes in the industrial structure
and increasing social importance ofintellectual property, to analyze the survey
results from the legal viewpoint, and thenconsider problems that become obvious
through the analysis.

II

Identification of the Problem(Subject of This Research)

With the development of biotechnology,
research tool patents have become a social
issue, and the issue of patents worked in the
research process has become obvious also atuniversities and other research scenes. Due
to incorporation of national universities, etc.,
universities are required to conduct
operation
andmanagement
more
independently. However, they do not haveclear guidelines for coping with this issue,
and thus, there is also concern about
withering of research at universities.
However, at the present time, there is no
judicial precedent that presents a standard tosolve the issue. Regarding exception to theeffect of a patent right against experiment or
research under Article 69(1) of the Patent Act,the theory in which application is interpreted
in a limited manner (Someno theory) is also
regarded as the popular theory for this issue.
According to the popular theory-based view,
working of a research tool patent in theprocess of research at a university, etc. does
not fall into “experiment or research” undersaid paragraph.
In this regard, the following three points
are considered to become problems. The firstpoint is the necessity of firmly understanding
and legally analyzing the current position ofuniversities, etc. that have gone throughunprecedented changes in the environment
and the actual conditions of research scenes.
The second point is the necessity ofconsideration from the standpoint of
direction toward solutions in actual scenes.
That is, while universities, etc. are expected
to perform and continue their research due tothe public interest nature of their research,fairness is particularly requested. It is

III Survey on the Actual Conditions
Surrounding
ResearchatUniversities, etc. and Analysis
Thereof1

Hearing survey
In this research, a hearing survey was
conducted targeting persons concerned inresearch activities at universities, etc. as partof actual condition surveys designed to study
and analyze the current position ofuniversities, etc. that have gone throughchanges in the environment and the actual
conditions of research scenes.
The hearing was conducted with persons
concerned in the following.
①
Departments
dealingwithindustry-academia
collaboration
andintellectual property, such as intellectual
property headquarters at universities, etc.
②Technology licensing organizations atuniversities, etc.
③Departments dealing with intellectual
property in companies④Researchers at universities, etc.
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2

Actualconditions
surrounding
research at universities, etc. andanalysis thereof(1) Environment surrounding research atuniversities, etc.
① Changes in the relationships with theindustry
Relationships with the industry havebeen shifting from personal relationships
between researchers at universities, etc. andthe industry to relationships between
organizations such as universities and theindustry.
In the past, research achievements werein principle attributed to individuals, andpatents for research achievements wereobtained by individual researchers or by
partner companies. Research achievements
have become in principle attributed toorganizations, and universities, etc. including
intellectual property headquarters have cometo play the above-mentioned role in place ofindividual researchers. Patents are obtainedby universities, etc. in the case of
independent research by a researcher andbased on agreement between parties
concerned in the case of joint researchthrough industry-academia collaboration.
Values for patents are paid to universities,
etc. as values for intellectual property rights.
Industry-academia
collaborationisdivided into two forms, specifically, joint
researchandcommissioned
research.
However, actually, financial assistance forresearch through scholarship contributions is
also included. In terms of changes in the formofindustry-academia
collaboration,
collaboration cases through provision ofresearch contributions have been decreasingalong with an increase in joint andcommissioned research projects. Although
the details of contracts were determined
between researchers and companies in thepast, at present, models of research contracts
have been prepared by each university, etc.
and secretariats at universities, etc. conduct
contract negotiations.
The following figure shows the change inthe relationship between universities, etc.
and the industry.

【Relationship in the past】【Current relationship】
Content ofresearchResearcher

Company
Contract
negotiations

University(IPdepartment)【Legal relationship】
Company

University

Researcher

University
authorities(IP department)②

Facts and legal relationship regarding
research at universities, etc.
a. Facts
The research-related role of universities,
etc. is mainly to serve as organizations incharge of office duties. Researchers atuniversities, etc. are not under the control ofuniversities, etc. in regard to the content of
their research. On the contrary, companies
have control over the content of research
conducted by their researchers. Companies
can give the freedom of research to in-houseresearchers or completely control theirresearch. However, in fact, they often ensure
the freedom of research for in-houseresearchers in order to maximize theresearch ability and creativity of researchers.
While companies can understand andmanage research activities by researchers,
including problem establishment, supposed
achievements and research contents, atuniversities, etc., individual researchers (orresearch groups) freely conduct researchin-house, and universities, etc. do not get
involved in research, except paperwork forresearch funds, etc., though they get anunderstanding of research in terms of officework. Universities, etc. are nothing morethan vessels to provide space and facilities
necessary for researchers to conduct
research.
The following figure indicates thein-house relationship between universities,
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IIP Bulletin 2007

Researcher(Laboratory)

Company

universities, etc. assume. Responsibility for a
default arises based on joint researchcontracts or other contracts. Responsibility
for a tort is employer’s responsibility that
universities, etc. assume in terms of the actsof their researchers, including infringementof rights, based on the employment
relationship (Article 715 of the Civil Code).
The following
figure showstherelationship between parties concerned in thecase where a default or a tort is establishedwith regard to a researcher’s act.

etc. and researchers at universities, etc. andthe in-house relationship between companies
and researchers at companies.
【Relationship within the organization of a university,
etc.】
Research institute such as a university

×Research bya researcher

Research bya researcher

Research bya researcher×

No intervention in
research×

×

Research bya researcher

×

Research bya researcher【Responsibility for a default】
University, etc.
(Addressee of thecontract)

Not linked with each other

Pursuing
responsi
bilityDefault by aresearcher【Responsibility for a tort】

Research institute such as a university
Free researchby aresearcher

Researcher(Perpetrator)

Free researchby aresearcher

Employment
relationshipResearch institute as a vessel
Free research
Free research
by a
by a
Free researchresearcher
researcher
by aresearcher

University,
etc.

Company

Management/control
ResearchMarketingResearch

Development

Production
Sellingb.

Legal relationship
Looking at the relationships between
universities, etc. and third parties in terms ofresearch at universities, etc., there is
responsibility for a default (Article 415 of the
Civil Code) in the case where universities, etc.
havenotperformed
contracts
andresponsibility for a tort (Article 709 of the
Civil Code) that arises in the research
process as civil responsibilities that4
IIP Bulletin 2007

Act of causing
damageClaim fordamages(Article 709 of
the Civil Code)Company(Victim)

Claim for damages(Article 715 of the
Civil Code)(2) Forms of exercise of patent rights① Method of exploiting patents
The methods of using patents as
intellectual property rights can be roughly
divided into four groups according to themethod of exploiting them. The first group is
for the forms of business, such as those in thepharmaceutical and chemical industries, inwhich core patents produce huge profits andprofits are ensured through monopolizationof patents by personally working patented
technologies. The second group is for theforms of business, such as those in themachine and metal industries, in whichplants or patents for processes ofmanufacturing are important or self-owned
technologies dominate the securing of profits
though many patents are used. The thirdgroup is for the forms of business, such as
those in the electric appliance industry, in【Relationship within a corporate organization】

Research

Company (Other
party to thecontract/victim)

their own but by granting licenses (exclusive
and non-exclusive licenses) or transferring
patent rights to others. Regarding technology
transfer activities, there are cases whereintellectual property headquarters of auniversity, etc. conduct these activities andcases where TLO of a university, etc. does so.
In the latter case, there are cases where TLO
conducts the activities upon receipt ofdelegation of the authority of representation
for licensing and cases where it does so uponreceipt of transfer of relevant patent. For
research achievements obtained throughjoint research in cooperation with companies,
universities, etc. claim compensation fees ascompensation for non-working.
② Composition
andfunctionsofdepartments in charge of intellectual
propertya. Personnel and costs for ensuring
activities
Intellectual property headquarters incharge of intellectual property-related
activities at universities, etc. are often
composed of office personnel of universities,
etc. and former company employees. The
fulfilling level of personnel significantly
differs depending on the size of a university,
etc. and whether or not a university, etc. isdesignated as one of the institutes subject tothe “Project for the Establishment of
University
Intellectual
Property
Headquarters” conducted by the Ministry of
Education, Culture, Sports, Science andTechnology from fiscal 2003.
Incomes brought to universities, etc.
from the intellectual property headquartersor through industry-academia collaboration
activities include incomes from intellectual
property rights, including patent royalties,
incomes from provision of materials, andoverhead costs that universities, etc. charge
other parties for collaboration in joint
research or commissioned research. Incomesfrom patent royalties are not much. Many
universities, etc. set overhead costs, which
theycollectinindustry-academia
collaboration, as 10-15% of research costs(direct costs).

which profits from products are ensured by
exploiting many patents, including not only
self-owned patents but also other persons’patents through cross-licensing with otherpersons (companies). The last group is for theforms of business in which profits are
ensured not by commercializing products
using self-owned patented technology but by
income from licensing patents to otherpersons (companies).
② Claims of rights and response thereto
The processing flow of claims of patentrights is as follows. A party (company)
claiming that its right has been infringed
gives warning to a party (company) accusedof infringement of the right. Then, thewarned party considers related matters, suchas the possibility that the accused technology
infringes the right, in-house. If the warned
party determines that the warning is clearlygroundless, it will ignore the warning. If theparty determines that there is theabove-mentioned possibility, it will examine
the possibility for circumventing the right. If
it is impossible to circumvent the right or if itis problematic to ignore the warning though
there seems no fact of infringement, thewarned party will negotiate with the otherparty. If parties cannot find a solution
through negotiations and either party thinksthat it has an advantage (including theintimidating effect) in filing a lawsuit, it willbring a case before the court. On the other
hand, the party accused of infringement often
makes a request for invalidation proceedings.
Companies cope with warnings in acomprehensive manner, taking into accountmanagerial viewpoints (including intellectual
property strategies of the companies) inaddition to technical and legal knowledge.
(3) Universities, etc. as entities exercising rights① Obtainment and exploitation of patents
Universities, etc. obtain intellectual
propertyrightsfor
theirresearchachievements through obtainment of patents.
Universities, etc. that do not conductindustrial activities get values for patented
inventions not by working such inventions on
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nor conduct negotiations for the profit of theentire operation. In contract negotiations,
universities, etc. claim their benefits in termsof the amount of research funds as temporary
profit and income and compensation for
non-working of research achievements.
e. Activities
tocoordinate
industry-academia collaboration
The major emphasis of activities ofuniversities, etc. to realize effective
industry-academia collaboration has beenshifting to coordination of various projects
and intellectual property management
activities. Universities, etc. are conducting
coordinating activities in which they makeactive approaches to smoothly realize
industry-academia collaboration, in addition
to setting up contact points in the industry
and developing relevant procedures.
f. Support for establishment of venturecompanies
The establishment of a venture company
basedon
researchachievementsofuniversities, etc. is regarded as one of theimportant means of putting technologies,
which are research achievements ofuniversities, etc., into practical use to returnthem to society. The major activities ofuniversities, etc. to support start-up anddevelopment of business are provision of
information necessary to start business andpermission to use on-campus facilities.
g. Active claims of intellectual property
rights
According to the hearing survey
conducted in this research, no case example
was reported in which a university, etc.
actively claims its patent right against
another person (company or other university,etc.) and sends a letter of warning. With
regard to research tool patents, one
university, etc. answered that it would like toconduct proactive activities in the futureusing activities of universities in the UnitedStates and university TLOs as a guide.
However, all other universities do not plan to
conduct such activities and also cannot afford
to conduct them.

b.

Obtaining intellectual property rights forresearch achievements
Universities, etc. hold seminars for theirresearchers in order to have the researchers
understand the meaning of notifying theirinventions to universities, etc. and give themprecautions
inpublishingresearchachievements in papers or at workshops.
Universities, etc. also understand research
activities of their researchers at an early dateand provide advice on the way of carrying
forward research on the premise ofobtainment of patents. Research for which apatent application is filed is selected based on
the procedure of each university. Such
activities significantly differ depending on
the fulfilling level of intellectual property
headquarters of universities, etc. In
particular, advice to researchers on theirresearch is given only to understanding
researchers who have personal relationships
with intellectual property headquarters staff.
Even at universities with a large-scale
intellectual property headquarters, suchfunction is possible only for someresearchers.
c. Technology transfer activities
Not many universities have intellectual
property headquarters with a system andpersonnel to actually conduct technology
transfer activities, including visits tocompanies, to a satisfactory extent.
Symposiumsonindustry-academia
collaboration as well as explanatory meetingsand panel exhibitions for new technologies
are held as activities to understand the seedsof researchers at universities, etc. and theneeds of companies.
d. Contract negotiations
Also in terms of contract negotiations,actual practice varies depending on theactual conditions of each university, etc.
Many universities, etc. make formal
confirmations in a matter-of-fact style. The
authorities at universities, etc., including
intellectual property headquarters, often
conduct negotiations on behalf of researchers
after some sort of trouble occurred.
Universities, etc. neither conduct contract
negotiations in light of individual situations
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that they often purchased programs to reduce
the amount of time required though they
could create them. In addition, someresearchers answered that researchers
frequently conduct exchange of “bacteria.”
Regarding laboratory equipment, a great dealof the researchers answered that they madeit for themselves or asked manufacturers tomake it through special order. This result
may be because researchers conduct researchon subjects that have yet to be put into themarket.
Researchers use various equipment,
substances and analysis programs to carryforward their research, and also make themto perform research. It can be said that
researchers are rarely aware of other persons’patents in terms of research tools.
③ Regarding preliminary search on priorart (patents)
The main reason for researchers tosearch the patent database is to file patentapplications
for
their
own
researchachievements. Therefore, researchers search
the patent database at the time when
research achievements are judged to be able
to be subject to a patent application. There
are some researchers who have neverconducted patent search though they have
filed a patent application for researchachievements. According to researchers, themajor reason for not searching patents is “noneed to do so.”(4) University as the user of other persons’(companies’) patents
Scenes where other persons’ (companies’)
patents are used in the operations ofuniversities, etc. are scenes of actual researchand education. As users of other persons’(companies’) patents, universities, etc.
purchase products involving patented
technology, or purchase kits as research tools,
and receive licenses for research tool patents.
However, universities do not necessarily use
such products and tools in reality, andresearchers and students in the scenes ofactual working of patented inventions or in
the scenes of purchase of kits do so.
(5) Present
situationofresearchers
concerning research tools① Awarenessof
otherpersons’(companies’) patents
Researchers in research scenes atuniversities, etc. are little aware of otherpersons’ patents. In the hearing survey inthis research, out of 24 researchers, only one
researcher had an understanding of
exception to the effect of a patent rightagainst “experiment or research” (Article
69(1) of the Patent Act) as the populartheory-based view. The researcher has greatinterest in transferring technology to society
by obtaining patents for his researchachievements, and thus conducts studies onpatents on a daily basis and also actively
participates in seminars. Actually, mostresearchers have never thought of thepossibility of infringing other persons’(companies’) rights.
② Method of using research tools in
research
In the hearing survey targeting
researchers, it seemed that researchers haddifficulty in understanding research tools in
relation to their own research since they are
not much aware of research tools in their
daily research activities. Research tools usedvary depending on the research field andresearch method. There are also various
methods of acquiring research tools. Some
researchers said that they created programsas analysis tools while other researchers said(6) Relationships between universities, etc.
and researchers① Relationships between universities, etc.
and researchers
At some universities, etc., researchers
are involved in obtainment of intellectual
property rights for research achievements,
technology transfer and industry-academia
collaboration activities. However, only someresearchers are deeply engaged in suchintellectual property activities. Universities,
etc. provide only clerical support toresearchers.
② Intellectual
property
activities
atuniversities, etc. and academic freedom
There were no case examples in which
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academic freedom becomes a problem interms of relationship between various
intellectual property-related activities atuniversities, etc. and freedom of research atuniversities, etc. In this hearing survey, alluniversities, etc. answered that they would
give first priority to academic freedom.
③ Relationships between researcher’s actof conflict of interest and universities,
etc.
Universities are promoting formulationof policies for the conflict of interest andestablishment of a system, including various
procedures. Almost all procedures for conflictof interest taken in actual operations relate
to dual occupation. To the best of the survey,
they
are
based
on
researchers’
self-declarations. There are no outstanding
conflicts relating to conflict of interest
between universities, etc. and researchers.
④ Relationships between public research
institutes and researchers
Public research institutes also tend toemphasize
contributions
totechnical
innovation
throughindustry-academia
collaboration and development of businessusing their own research achievements.
However, there are various purposes forestablishing a public research institute, andthe environment surrounding a publicresearch institute varies depending on its
particular mission. Public research institutes
also have departments in charge of
paperwork, which are equivalent to theintellectual
property
headquarters
ofuniversities, etc. However, such departments
mainly carry out paperwork relating toprocedures for notifying inventions and serveas contact points for outsiders. Thus, thelevelofpublicresearch
institutes’
involvement in their researchers in terms ofintellectual property is low compared to thatof universities. Since no publicly supported
project like the Project for the Establishment
ofUniversity
Intellectual
Property
Headquarters exists for public research
institutes, different from universities,
intellectual property activities of many publicresearch institutes are on a small scale.

IV Consideration
1

Public interest nature of research atuniversities, etc. and universities as
educational institutions(1) Public interest nature of universities,
etc. and ensuring of fairness
Universities are based on missions ofeducation, research and social contribution.
In addition, public research institutes are
established based on particular missions.
Universities, etc. are requested to work on
research with ingenuity and strategic
flexibility. However, they are above all
required to conduct appropriate and fairresearch activities. In terms of the handlingof intellectual property, appropriate use andmanagement are requested to keep fairness.
(2) Ensuring “academic freedom” and“freedom of research”
The Constitution guarantees “academic
freedom” (Article 23 of the Constitution).
“Academic freedom” includes “freedom ofacademic
research.”
The
Constitution
requires that “freedom of research” beguaranteed and that interference andintervention in science and technology be
restricted.
(3) Education relating to intellectual
property
The importance of intellectual creationand its appropriate protection and utilization
has been recognized. It is necessary todisseminate to society a mechanism of theintellectual property system, importance ofintellectual property rights and exploitation
thereof, as well as respect for other person’s
rights. Taking into account the importance of“creation of knowledge,” of which researchers
take charge, and the public interest nature
inherent in scientific research, it is necessary
to promote research and education underappropriate rules while respecting otherpersons’ rights.

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research to society.
(2) From the standpoint of change in the
research environment at universities,etc.
The
research
environmentfor
researchers at universities, etc. has changed
due to promotion of industry-academia
collaboration and change in desirable
industry-academia collaboration. Althoughindustry-academia collaboration was basedonpersonal
relationships
betweenresearchers at universities, etc. andcompanies in the past, it has come to surface
as relationships between universities, etc.
and companies. Claims made by universities,
etc. with regard to research funds andhandling of research achievements caused
confrontation between universities, etc. andpartner companies. Companies also havecome to require specific achievements fromjoint research and commissioned research
conducted in cooperation with universities,
etc. more than ever. Moreover, companies aretrying to strategically use the researchfunction of universities, etc. A situation is
expected to arise in which multiple
companies confront one another around one
university, etc. Then, there arises a need for asystem to ensure the public interest nature ofresearch at universities, etc. in considerationof interest in the industry so as to prevent
unexpected damages to the industry andobstacles to R&D in the industry. It isnecessary to consider problems in the patentlaw system while taking this point into
account.
(3) From the standpoint of differences
between universities, etc. and theindustry
Universities, etc. intervene in research
conducted by their researchers only in termsof clerical work. Thus, it is necessary toconsider problems in the patent system on
the premise that researchers at universities,
etc. deal with patents in the research process.
Universities, etc. are not able to takestrategic actions, like those which arecommonly taken in the industry, against
claims of rights by other persons (companies).
In addition, there is a limit to the effort of2.

Necessityofgivingspecialconsiderationtoresearch
atuniversities, etc.
(1) From the standpoint of change in theposition of patent rights in society
The position of intellectual property insociety has changed. Under the intellectual
property-based nation policy, society as awhole has been oriented toward “creation,
protection and exploitation of intellectual
property.” Universities, etc. have become
expected to conduct lively intellectual
creation activities and have come to play arole in the intellectual creation cycle.
Inventions created through research atuniversities,etc.
arepatented
andtransferred to society. To effectively return“knowledge” of universities, etc. to society,the principle of attributing rights (researchachievements) to organizations was indicated.
Thus, universities, etc. have come to obtain
intellectual property rights and manage andexploit them in one lump. In the past, theissue of handling of patent rights obtained
particularly for research achievements ofuniversities, etc. has not come to the surface
as it was regarded as an issue only in theindustry. As universities, etc. have become
establishedentities
exercisingrights,intellectual property rights including patentrights have become issues to be dealt with byuniversities, etc., and entities that do notbelong to the industry have come to conductvarious intellectual property activities, fromobtainment of patents to transfer of rights,
under the market rules for industrial
property. On the other hand, the patent
system has developed as a legal system to be
utilized in the industry, and thus, there havenot been sufficient discussions on special
consideration to be given when entities suchas universities utilize the system. Therefore,
it is necessary to examine problems in thepatent law system in consideration of theparticularity of entities that do not belong to
the industry, such as universities, with theunderstandingofincreasingsocialsignificance of intellectual property rights
and the requests of society arising fromchanges in the system to return scientific
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universities, etc. to improve their own
organizations and abilities to cope withclaims of rights by other persons (companies)
due to their missions and required costs.
Therefore, it is necessary to consider
problems in the patent law system on thepremise that universities, etc. cope withclaims of rights by other persons (companies)
as part of their research-related clerical work,
separately
fromstrategic
intellectual
property right activities.
(4) Fairness required for research atuniversities, etc. and avoidance ofwithering of research
Researchers at universities, etc. conduct
research activities using various tools in a
flexible manner through mutual cooperation
among them based on their intellectual
curiosity. Such tools include technologies andsubstances for which other persons(companies) have obtained patents. It isdifficult for individual researchers atuniversities, etc. to conduct research while
dealing with all patents that are worked in
the research process. In addition, it is notrealistic that universities, etc. intervene inresearch under the veil of the need to deal
with other persons’ (companies’) patents, andsuch intervention may be excessive.
Excessive intervention is problematic fromthe viewpoint of request for “freedom of
research.” On the contrary, if any problem
occurs (for example, universities, etc. become
subject to a claim for damages or demand for
injunction for the reason of patent
infringement), fairness socially required forresearch at universities, etc. and awarenessthereof may have undue impact on theuniversities, etc. and may have the effect ofwithering research activities.
Moreover, universities, etc. are required
to establish an appropriate system to keep
fairness in advance of occurrence of
infringement due to the social public interest
nature that they must have. This is required
not only in terms of research at universities,
etc. but also in terms of education.

(5) Public interest nature of research atuniversities, etc. and exclusive natureof patent rights
If patents worked in research andeducation at universities, etc. also fall into
patents worked “as a business” under Article
68 of the Patent Act and do not fall into
patents worked for “experiment or research
purposes” under Article 69 of the Patent Act,patentees will be able to seek injunction
against such working (Article 100(1) of the
Patent Act) and demand the removal of
facilities used for the working (Article 100(2)of said act). The missions of universities, etc.
are to conduct research and provide
education. Therefore, injunction against
research and education is a critical issue foruniversities, etc. It is also expected to havesignificant adverse effect, taking into accountthe public interest nature of research atuniversities, etc.

3Conclusion
Considerations so far reveal thenecessity of giving special consideration toresearch at universities, etc. in the patentlaw system.
First of all, for various patent rights thatare not supposed to be used in research orexperiment, it is necessary to keep fairness inresearch at universities, etc. by recognizing
exception to the effect of a patent right interms of research at universities. In thisregard, the definition of “research tool
patents that are obtained on the premise ofbeing worked in experiment and research”
and use thereof matter. Moreover, it is also
necessary to recognize exception to the effectof a patent right in terms of patents that are
worked in research and experimentconducted in the course of education.
Next, due to the public interest nature ofresearch at universities, etc. and thenecessity of continuous research, it isnecessary to restrict demands for injunctionthat are claimed on the ground of
infringement of a patent for research toolthat is used in the research process.
Obtainment of a license for the research tool
is required to continue research. If the10
IIP Bulletin 2007

relevant right holder does not grant a license
or if license fees are inordinately expensive, itwill be virtually impossible to continue
research. Therefore, it is necessary toconsider making the compulsory licensing
system available for research at universities,
etc.

11
IIP Bulletin 2007