International Journal of Intellectual Property Law, Economy and Management 1 (2005) 37–45

Intellectual Property Management of National
University Corporations
Shift to Institutional Ownership and its New Challenges
Ryuji Shimoda
Frontier Collaborative Research Center, Tokyo Institute of Technology

1. Introduction
The incorporation of national universities is now at its
implementation stage. Japanese national universities
that used to be state-owned institutions under the
Ministry of Education, Culture, Sports, Science andTechnology (MEXT), commence their activities as
independent legal entities. Many government ordinances, e.g. accounting rules and asset management
regulations are lifted, and as the scope of discretion
expands for each newly established corporation, thedegree of freedom for their actions becomes greater. It
is clearly written in law that functions which may be
preformed by national university corporations are 1) toconduct funded or cooperative researches, 2) to distribute research results to promote their utilization, and
3) to invest in organizations specializing in university
technology transfer.1 In addition to this, various systems to support the creation, ownership, management,
and utilization of university-based intellectual properties are also being developed. The incorporation, at thesame time, changes the patent ownership policies forfaculty inventions; patenting rights that were formallyheld by the inventor will basically belong to the institution (i.e., the National University Corpo-ration).
Putting all these factors together — the disseminationof research results, the independence and freedom of
university activity, and the changes in patenting policies — there is now more expectation towards theeffective use and management of intellectual properties owned by national universities.
In this paper, an update on the situation of the management and utilization of intellectual properties atnational universities will be given, and also the significance and issues of the new patent policies that are put
into effect at the time of incorporation will be examined.

ISSN 1349-7723© 2005 IPAJ All rights reserved.

2. Management and Utilization ofIntellectual Properties at National
Universities
Before examining the shift in patent ownership, weshould take a look at the recent history and situation of
intellectual property management at state-owned
national universities.
2.1.

Management Rules for Inventions Made atState-owned National Universities
The patent ownership policy was based on the“Guidelines for patents on inventions made by university employees and others” — a recommendation of
the Ministry of Education’s Science Council, which
was submitted on June 17, 1977. At that time, in viewof developing academic research and promoting efficient utilization of intellectual properties, the “individual patent ownership policy,” in which the patentrights were maintained by the inventor was thought tobe the best possible measure to be taken.
In other words, the patent ownership of an invention
made by a faculty member at a national university wasin principle attributed to the inventor, and was to be
granted to the university only on an exceptional basis.
Such exceptions were inventions achieved with application researches that utilized:– special government research funds, or– particular large-scale government research facilities
that were installed for special research purposes.
For appropriate invention management, each university stipulated invention rules and set up an invention
committee. After the committee submitted their patent
ownership assessments, the president of each national
university made the final decisions. Once an invention
was deemed to be state-related, the patent application,
including all expenses, fell under the government’s
responsibility and on the request of each university the37

R. Shimoda
Table 1.

Year

Inventions Reported at National Universities in Recent Years

Number ofState Related Cases

Invention

Inventor

Committee
Reviews

Primary
Transfer
Cases
Red Cases

Inventor-owned Cases

Total

（％）

Total

（％）

1993

417

51

17

68

16.3

349

83.7

1994

377

32

12

44

11.7

333

88.3

1995

435

34

11

45

10.3

390

89.7

1996

448

53

13

66

14.7

382

85.3

1997

650

76

33

109

16.8

541

83.2

1998

1059

189

45

234

22.1

825

77.9

1999

1725

229

52

281

16.3

1444

83.7

2000

2391

288

71

359

15.0

2032

85.0

2001

3040

318

96

414

13.6

2626

86.4

2002

3832

544

138

682

17.8

3150

82.2

Source：Ministry of Education, Culture, Sports, Science and Technology（MEXT）

Japan Science and Technology Corporation (JST) 2
handled all necessary procedures.
As for the patent ownership of inventions that wereachieved in cooperative researches or funded researches, the following arrangements were made between theuniversity and cooperative or funding agents. Allaccomplishments of funded researches were regarded
as state-related.3 This was due to the fact that the funded research expenses were regarded as the special government research funds. For cooperative researches
conducted by university faculty members and company researchers, the patent ownership was divided
accordingly to each individual’s contribution to theinvention. The faculty member’s portion became
national property because the research expenses fell in
the category of the special government research funds,
and the company researcher’s portion was attached tothe company as a service invention. In the event a faculty member or a corporate researcher independently
makes an invention, the ownership was initially placedwith the inventor and later with either the university or
the company after the confirmation of the other party.
Company and faculty members sometimes refer toresearches that use donation for research money as“cooperative researches.” The act of promising a company in advance the transfer of intellectual property
rights in return for its donation for research is a violation of the rules governing the acceptance of donations. But because the donation of research did not fallin the category of special government research expenditure, the research achievements were deemed nonstate related and therefore belonged to the faculty individual, who could choose to take any course, including38

the assignment of rights to any given company.
2.2. Performance of Invention Committees
Table 1 shows how national universities handled theirinventions.
The general trend in the recent decisions of university invention committees can be summed up as follows:– After 1997 there has been a sudden increase in thenumber of cases reviewed;– Around the same time the number of state-relatedcases has grown as well;– During the last ten years the proportion of staterelated inventions was the greatest in 1998;– The number of inventor-owned cases has increased
rapidly since 1998.
Besides the increase of general awareness of intellectual property among faculty members, there are twoother factors behind this trend. The growing number ofstate-owned patents is attributed to the budget growthof newly established or expanded funding schemes inbasic research, which various government ministries
and agencies have been supporting since 1995 and1996. Research results brought about by using suchfunds were classified state-owned inventions. The
other factor is the formation of Technology Licensing
Organizations (TLOs), which is thought to have dramatically increased the number of committee reviews
and inventor ownership since 1998 and/or 1999.
Before acquiring the patenting rights of faculty-related
inventions TLOs needed to confirm the patent ownership through the university’s internal procedures.

Intellectual Property Management of National University Corporations

2.3.

Management and Utilization of Patents at
National Universities
Keeping track of all the patents granted to university
researchers is not an easy task, but in the case of stateowned patents, which were managed as national properties, there are data available for analysis. By using
publicly available information on government patents
we can measure the domestic performance of eachnational university in regard to acquired patent ownership, granted licenses, and shared co-ownership.4
By the end of March 2002, national universities
owned 827 domestic patents (of which 121 were coowned) and 507 foreign patents (cumulative total ofwhich 78 were co-owned). Table 2 denotes the patents
and licenses of universities that hold more than ten
domestic patents. There seems apparently no fixed pattern for each university. Although some universities
are quite large in size, they have relatively fewer stateowned patents.
The causes of this fluctuation among universities are1) the ambiguous definition of patent ownership principle, and 2) the dependency on each invention com-mittee for their management and judgments. Most universities make it mandatory for the inventor to submit
all inventions to the invention committee forappraisals, but there are some cases at major universities where the inventor has the power to decide
whether to report to the invention committee, thus theownership of a patent.5 Such applications of the invention submission system without consistency acrossnational universities seem to have resulted in relatively
inactive acquisitions of national patents at some large
universities. It was more convenient for companies toobtain patent rights (whether with or without committee appraisal) from individual faculty members rather
than from the national government.
The rule applied to handling of inventions made byfaculty members was actually different for each university. Without clearly defined university policies it
may be said that there was a lack of transparency. For
companies engaging in cooperative or funded researchwith national universities, the ownership of an invention may have varied depending on the university or
faculty member involved. Taking this difference andTable 2. Patents and Licenses of the 16 Major National Universities（March 31, 2002）
Patents RegisteredHome

Licenses Granted

AbroadHome

Co-owned
Hokkaido University
Tohoku University
University of Tokyo
Tokyo University of Agriculture
and Technology
Tokyo Institute of Technology
Kanazawa University
Shizuoka University
Nagoya University
Nagoya Institute of Technology
Kyoto University
Osaka University
Tottori University
Hiroshima University
Kyushu University
Kyushu Institute of Technology
Saga University

Co-owned

18
60
73
17

2
3
2
2

9
35
64
9

1
2
8
0

1
0
2
0

131
17
28
82
13
53
101
10
31
24
13

25
0
1

53
25
0
51

10
0
2
14
0
1
4
5
2
3
6
2

2
0
0
5
0
0
3
1
0
0
0
0

21

29
5
3
16
3
2
3
0
0

7
92
32
2
34
28
1
25

Sub Total

692

96

467

60

14

National University Total

827

121

507

66

19

Annotations：
1）Statistics were compiled by using the per-item lists on national properties.
2）Universities on the list hold more than ten domestic patents.
3）Saga University and Tokyo Medical and Dental University are the only universities
that have granted licenses overseas.
Source：Individual Statistics for Government Patents（http://www.mof.go.jp/jouhou/zaisan/tokkyob.htm）

39

R. Shimoda

the fact that there was actually a uniform guideline forpatent management for all universities, it might be said
that fairness was compromised.
Furthermore, the system of submitting inventions to
the invention committee did not function effectively
because, 1) the faculty members had inadequate
knowledge of the handling of university inventions,and 2) the universities did not necessarily get involved
actively in the promotion of management and utilization of the submitted inventions.6
The number of licenses derived from state-owned
domestic patents is 66 (out of which 19 are co-owned),and the ratio of licensed patents to the total registeredpatents is 8.0% (for the singly-owned 6.7%, and forthe co-owned 15.7%).
It may be difficult to evaluate these numbers, but
comparing them with the performance of the aftermentioned technology transfer activities of TLOs, thelicense/patent ratio is low. The reasons for this inactive
utilization of state-owned patents seem as follows:
1) The determining factors of patent ownership were
the research expenses and equipment used for theinvention, with very little consideration on licensing potential;2) There were little incentives for universities to utilize state-owned patents, to which JST — a far
away presence to the university and inventor —was mainly responsible for patent management andIP marketing.
2.4. Utilization of Individually-owned Inventions
No systematic studies are to be found on the utilizationof inventor-related inventions at national universities,
but there are still some data indicating the overall
trend. According to a survey conducted by JST,
although many inventions resulted through faculty
involvement there were very few cases in which theuniversities were the patent applicants. Table 3 is thebreakdown of the unexamined patent applications
inventors of which are researchers in the field of natural science (1991–1998) at the main 34 universities(National & Public 27, Private7). The ratio of corporate involvement that includes joint application was
87%, which is an overwhelmingly figure when compared to the ratios of the university, JST and otherorganization’s involvement (11.6%) and the individual
involvement (21.4%) (Total ratios exceed 100% due toco-applications). Among these figures the ratio of university involvement is 1.7%, an extremely small cut.
This reflects the faculty data of national public and private universities, but a survey of national universities
alone would probably produce a similar result.
In other words, most of the university-spun inventions that are on patent applications were acquired andfiled by outside companies. The important issue
remained here is whether the faculty members, asinventors, are appropriately compensated or not.

3. The Establishment of TLOs and Their
Activities
TLO activities represent the supportive movements inthe patenting and licensing of individually owned
inventions at national universities.
3.1. Establishment of TLOs
Since early 1980s in the United States, the system topromote university technology transfer has undergone
constant improvement, and the resulting progress inthe commercialization of technology from US research
university has lead to the creation of many new industries and the strengthening of the US economy. Basedon this perceived success, it was thought that Japanese
universities, where many researchers and funds wereallotted, should also promote technology transfers tocompanies, and the establishment of TLOs as universi-

Table 3. University Patent Applications and the Ratio of Corporate Involvement
Ratio of Corporate Involvement（Single/Joint Application）
87.1％
Single 69％

Ratio of Other Institutions （Universities, JST, Foundations, etc.） Ratio of Individual
Involvement
JST （Includes Individuals）
Universities
11.6％

3.2％

1.7％

21.4％

Joint 18％

Annotations：
1）Data compiled by using PATORIS（Patent On-Line Information System）on unexamined patent applications（1991-1998）
of natural science researchers（Prof. and Associate Prof.）at the main 34 universities（National & Public 27, Private 7）.
2）Because of co-applications the total of Corporate Involvement Ratio, Other Institutions Ratio, and Individual Involvement
Ratio will exceed 100%.
Source：Japan Science and Technology Agency（Material submitted to the Intellectual Property Task Force of the Council
for Science and Technology Policy at the meeting on April 2, 2002.）

40

Intellectual Property Management of National University Corporations

ty technology transfer institutions gained its momentum. To facilitate this movement, the “Law to Promote
the Transferring of Technology from the Universities”(Technology Transfer Promotion Law) was enacted in
1998.
There was no legal restriction in helping faculty
members find licensees in Japan. The purpose of theTechnology Transfer Promotion Law was to grant government subsidy and give supportive measures such as
patent fee reductions towards organizations that fulfilled certain conditions (i.e., organizations approved
according to the guidelines set by both MEXT and theMinistry of Economy, Trade and Industry (METI)).
These subsidies are administered at the startup periodof the TLOs in order to cover some of the differences
made by the large patent obtaining costs and the small
initial revenues. As of January 2004 there are 36 organizations that have been approved. The organizational
forms taken were stock companies (17), internal university departments (7, all private universities), divisions of existing non-profit organizations (9), and limited private companies (3).
3.2. Activities and Challenges of TLOs
A TLO firstly evaluates the information on the invention provided by a university researcher. Then after
evaluating the potential for commercialization it
acquires the patenting rights from the researcher to filefor the patent and attains its rights. At the same time
the TLO starts marketing the invention to companies
that show interest and negotiates a license agreement.
Compared to the former company-faculty member
negotiations, the new negotiation style, being held
between two organizations, would surly be moreadvantageous to the faculty inventor. Royalty revenue
generated through the licensing of TLO-owned patents
is normally divided among the inventor, university and
the TLO after the deduction of necessary expenses by
the TLO.
TLOs were established outside the university framework, usually in the form of stock companies (withequity held by voluntary faculty members), except for
private universities, where they are placed within theuniversity organization. Because most research universities in Japan are national universities, and because
TLOs were profit-seeking organizations, they were set
up outside the university either as stock companies
invested by faculty members or as part of existing nonprofit organizations. Even in the successful TLO casesof major US research universities it is reported that it
took more than ten years to cover all the costs with
their income. 7 Although government subsidies areavailable, the length of period until sufficient license
revenues are generated is a serious issue for most
TLOs that are corporate entities. Because the length of
this period differs with each research result and isquite unpredictable, it is necessary to keep a longrange view when managing a TLO. Therefore, withsome exceptions of non-profit organizations, there is abasic potential problem of how to keep the necessary
long-range views of TLOs consistent with their shortterm profit-seeking corporate forms. In view of this the
new policy that enables national university corporations to invest in TLOs is highly appreciated, as thismay consolidate the TLO’s financial foundation andallow its long-range management.
The annual performance figures of the approved
TLOs in FY 2002, including the numbers of intellectual properties of private universities, were 1,335 domestic patent applications, 284 overseas patent applications, 349 license cases, and ¥410million in royalty
revenues.8 The licensing rates (licensing cases/filed
patents) of external and internal TLOs were 29% and18%, respectively,9 which show that TLO patents arelicensed out more frequently than the state-owned
patents at national universities. By achieving higher
licensing rates than the state-owned patents, TLOs
seem to have proven their effectiveness in filing, maintaining, and managing the acquired faculty-owned
intellectual properties. Therefore, it is necessary to
make good use of this ability and the accumulated
knowledge and experience of the TLO even after theincorporation of national universities. However, thefact should be beard in mind that TLO activities are
partly sustained by the budget and physical support of
the government including subsidies and temporary
staffing that does not appear in the TLO accounting
books.

4. Changes in Intellectual Property
Management and Utilization after the
Incorporation of National Universities
How exactly are the changes in the management andutilization of intellectual properties going to take place
after the incorporation of national universities? Thereis no uniform answer to this question because the key
to incorporation was to bring out the individuality ofeach university. But it is still possible to outline in general terms of the changes that will occur if national
universities employ their vigorous policies in industryacademia collaboration.

41

R. Shimoda

4.1. Shift to Institutional Ownership
In various government committee reports and plans it
is recommended that there should be a policy to place
the patenting rights of faculty inventions in the handsof the National University Corporation.10
According to the summary of a report of a committee of the MEXT’s Council of Science and Technology
held in April 2003, the reasons to change the patent
ownership policies were listed as follows:– Today there is a stronger expectation towards thesocial contribution of the university;– It is necessary to increase the understanding of citizens and taxpayers;– Universities are now more equipped to handle technology transfers.
Furthermore, in view of the progress of academic
research and the efficient use of intellectual properties,
it goes on to state that under such circumstances, if wewere to choose the best road today, it would be toassign the ownership of the patenting rights to theinstitution, in this case the national university corporation.
The MEXT report indicated that the problems thatwould arise in attaching the patenting rights to individual inventors would be as follows:– It is difficult for the university to address the issue asan organization;– The inventor would have to bear the costs of acquiring and maintaining the patents;– For an individual to find an end user is quite difficult;– Most intellectual property would thus become deadstorage and the research achievements would not be
returned to society.
The institutional ownership, on the other hand, would
make improvements on these problems brought about
by individual ownership and would help realize theeffective utilization of intellectual properties and thereturn of profits to society.
When setting up the corporations the universities
will each issue an “Intellectual Property Policy” (Somemay call it Industry-Academia Collaboration Policy orTechnology Transfer Policy). In this Intellectual
Property Policy, along with the basic strategy for
returning the research fruits to society, the criterion of
judgment for handling the intellectual properties will
be articulated in accordance with the individuality andcharacteristics of each university. By presenting suchconcrete criteria it is hoped that the handling of university inventions will become more transparent compared to previous practices. In line with eachIntellectual Property Policy, the actual “service inven-

42

tion rules” and related regulations will be formulated.
The scope of such service inventions may differ foreach university.
4.2.

The Relationship between University andIndustry
As is mentioned, the act of promising a company inadvance the transfer of intellectual property rights inreturn for its donation for research was a violation of
the rules governing the acceptance of donations.
However, as the donations of research did not fall in
the category of special government research expenditures, in reality, it was possible for the companies toreceive the rights from faculty individuals. This practice is not allowed after the incorporation of the institutional ownership. If a company wishes to obtain theintellectual properties invented by faculty memberswith certainty, it would have to sign an official contract with the university. For this reason the emphasisof the relationship of company and faculty members
will shift its weight to the relationship of company anduniversity, to which the faculty member belongs.
So far, due to the lack of experience in institutional
ownership, there are very few convincing supportive
data showing whether or not this new patent policy
will effectively promote the utilization of universitybased intellectual properties. However, it seems truethat society will no longer allow the utilization of taxpayers’ money to create inventions that will mostly
belong to inventors for their own disposal. In light ofthis situation, it would seem to be appropriate to use
the university as a filter when utilizing the universitybased intellectual properties for society. Here, the conflicts of interest in industry-academia collaborations
are attracting more attention in this regard. This conflict arises when a faculty member’s obligations orinterests toward a collaborating company clash withhis/her original duties at the university. The fact thatappropriate management of this issue is being discussed at the same level of importance as the change
to institutional ownership suggests that society is calling for a convincing way to properly use and manage
intellectual properties.
4.3.

System Development for Intellectual Property
Management and Utilization
To this day many efforts have been made to utilize thenational university-based intellectual properties, e.g.
the founding of cooperative research centers and theinstallation of research cooperation divisions within
university secretariats. Improvements for industryacademia collaboration and intellectual property man-

Intellectual Property Management of National University Corporations

agement are under way and university intellectual
property departments are also being set up for the firsttime. Starting from FY 2003, MEXT has started their“University Intellectual Property Department
Program,” in which they selected the 34 approved
cases (56 universities and institutions) out of the 83
nationwide applications from national/public/private
universities, colleges and inter-university research
institutes. Among the approved, 26 cases (42 universities and institutions) were from national universities
and inter-university research institutes.
National university corporations may now set theirown terms and conditions when licensing universityowned patents. Not only nonexclusive licenses andexclusive licenses, but also registered exclusive licenses and assignments of patents become possible. Of
course it was allowed in the past to assign patents, but
because university authorities in charge had little
incentive in doing so and were faced with the difficulties of upholding fairness and setting fair prices, there
were hardly any cases of assignments to be seen up to
this day. From now on, however, under the leadershipof presidents, the universities are expected to makeand act upon their own decisions.
Consequently, the incorporation of national universities has prompted the improvement of the grounds andsystems of the university to efficiently and effectively
manage and utilize intellectual properties. At the sametime, by securing its transparency the system is
becoming suitable for an institution that is using taxpayers’ money.

5. Tasks Following the Incorporation of
National Universities
The incorporation of national universities is indeed agreat chance to promote the effective management andutilization of intellectual properties. There are, however, many tasks to be overcome in order to make theprocess more substantial. In the following sections, themajor issues at hand will be explored.
5.1. Balancing Corporate and University Cultures
What is important to industries when utilizing the university-based intellectual properties is not just thelicensing procedures, but also the close cooperative
relationship between industry and university, which isreflected in such activities as additional cooperative
researches and technical assistance. Such cooperation
between two completely different kinds of organizations should involve the coordination of their goals,

philosophy, and organizational behaviors.
Companies basically seek profits. So under fierce
competition they try hard to maintain confidentiality
and to secure exclusive intellectual properties or
know-how to keep their competitive edge. On theother hand, the main goals of universities are education and research. To pursue these goals it is extremely
important to maintain an open atmosphere and to givepriority to the publication of research papers. With thechange to institutional ownership, university organizations have to engage in issues that were once settled
through the relationship of faculty individuals andcompanies. In cooperating with industry, universities
are required to decide how to balance their founding
philosophies, goals, and values with whatever thecompanies hope for.
5.2.

Ensuring the Costs of Patent Applications/Maintenance and the Criteria for
Institutional Ownership
After the patent ownership shifts from individual toinstitutional, universities start managing their intellectual properties independently. They have to face theproblem of raising patent attorney’s fees for theirpatent applications, and because the former stateowned patents are turned over to the newly establishednational university corporations the costs for maintenance and management of these patents also become
necessary. Some think that these patent application andmaintenance fees should be paid out with university
expenditures such as operational cost subsidies,direct/overhead expenses of competitive government
research funds, or overhead/ common expenses of corporate funded or cooperative researches. At the sametime many other options, including the use of royalty
revenue, are also being sought at each university.
Whichever road is taken, each university’s choice willreflect its philosophy, intellectual property policy, andthe situation it is in, but whether it can make thatchoice in an attempt to raise necessary expenses will
depend on the leadership of the president or director ofthat national university corporation.
Another task the incorporated universities will faceis the screening process of the inventions that are inline for patenting. Because there is a limit to the budget, not all inventions will be approved for patenting
by the university. This is just the kind of situation inwhich the accumulated experience and expert knowledge of TLOs should be effectively employed. Thereare concerns, however, about whether an appropriate
decision can be made with constant pressure from theinventor, especially when patent numbers are being

43

R. Shimoda

used as an index to evaluate the performances of theresearchers and university departments.11
5.3. Strategic Management of Intellectual Properties
Considering the vast international market in which
Japanese companies are doing business, universitybased intellectual properties, when filing for patents,
should also go global. Another strategic management
issue to keep in mind is how to terminate costly patent
procedures in the event the cost-benefit performances
become unacceptable; it does not matter if the subject
is midway into the application stage or at the maintenance phase. For national university corporations thatno longer enjoy the protective wings of the government, patent infringement suits might also become
serious issues, and to pursue the effective utilization ofuniversity intellectual properties such risks should be
minimized by strategic management measures.
5.4.

Building a New Relationship between National
University Corporations and TLOs
Major research universities that have great potential
for inventions and patent applications usually havesome kind of ties with existing TLOs. Such ties can beclassified into two types: the one-university type, andthe several-university type. TLOs doing business withnational universities have been acquiring the patenting
rights of faculty individuals. But since there will be no
more individually owned patents, such conventional
operations will be difficult. Building new relationshipis becoming an important agenda for both TLOs andnational university corporations. The key to this problem is to find ways to effectively utilize the knowledge, experience, and efficiency of TLOs.

personnel who are capable of evaluating certain technologies and have experience in corporate activities.
Although compensation and benefit programs for thistype of staff can become a big issue in itself, national
university corporations should also consider giving the
new work force the authority to join in on importantbusiness decisions, and with executive and clericalsupport, if they want things to work properly.
5.7.

Tackling the Issues Arising with the Institutional
Ownership
Problems that were not so obvious when individualownership was patent policy gradually came to lightwith the shift to institutional ownership. Ways to handle inventions of inbound and outbound researchers,
how to deal with faculty member’s dual jobs at venturecompanies - there are many problems that now need tobe tackled. During the transition period, companies
will have two sources from which to obtain theirlicenses: patents already belonging to TLOs; andpatents newly owned by national university corporations under the institutional ownership policy. For
most companies, negotiating with both parties simultaneously will be cumbersome, but even in such cases
everything should be handled in an appropriate manner. To carry through the institutional ownership policies, universities should make responsible decisions
for matters that were formally handled by individual
faculty members and were not their concern. In viewof these heavy responsibilities, the presidents ofnational university corporations must now take thelead in promoting the management and utilization of
intellectual properties.
1

5.5.

Efficient and Swift Management of University
Clerical Work
The paperwork processing time of TLOs and universities should correspond to the business tempo of companies, especially if their licensing efforts of intellectual properties are aimed at such companies. Even if anational university corporation adopts an internal TLO
system its responses should always be efficient andswift. To achieve this goal they should review andreform the mentality of university employees and theprocesses of accounting and contract making.
5.6.

Recruiting Experienced Technology Transfer
Personnel
When implementing the university’s intellectual property management and technology transfer service, one
cannot stress too much the importance of using outside

44

2

3

4

5
6
7
8

Law of National University Corporations (2003),
Article 22
Currently the Japan Science and Technology Agency.
JST only undertook the paperwork related to state
patents, and does not file patents in their own name.
Before JST, the Japan Society for the Promotion of
Science (JSPS) was in charge of this operation.
Under the Research Exchange Promotion Act of 1986,
up to 1/2 of the state-owned rights was transferable tothe outsourcing company.
A quantitative analysis of the overseas patents was notconducted, because one domestic patent may become
inflated when filed in numerous countries.
Kneller, Robert.
MEXT. Intellectual Property Working Group Report.
Tsukamoto, Yoshiaki.
Ten Proposals for Further Advancement of AcademiaIndustry Cooperation. p. 4.

Intellectual Property Management of National University Corporations

9

10

11

Idem. p. 5. Although the licensing ratios of TLOs arelower in Japan than they are in the US, it is unpracticalto simply compare the two countries as each adopts
different patent policies, i.e., the first-to-invent system
for the US and the first-to-file system for Japan.
Cabinet Office, Intellectual Property Policy
Headquarters. Strategic Program for the Creation,
Protection and Exploitation of Intellectual Property.
July 2003.
The evaluation indicators may be the numbers for filed
patents, approved patents, or granted licenses, or the
royalty revenues. However, considering the lead-timenecessary for the approval and licensing of a patent,
the main indicator would tend to be the number ofpatents that are filed. If this is so, the pressure towards
patent filing will become even greater.

References
MEXT, Council of Science and Technology, Technology
and Research Foundations Section, IndustryAcademia-Government Collaboration Promotion
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