3

Management and Utilization of Intellectual Property at
Universities

Steady progress has been made so far in the development of systems for the management and utilization of
intellectual property (IP) at universities. However, if we regard IP activities as constituting an intellectual
creation cycle that starts from creation and leads to protection and utilization, we must say that IP activities atuniversities are still in the process of nearly finishing the first stage of the cycle.
For the future, universities should gradually shift from the first stage, of raising their awareness of IP and
filing applications, to the second stage, of obtaining useful rights and licensing technology, while establishingsystems and operations for carrying out IP activities on a medium and long-term basis.
To this end, it is necessary to further advance IP-related organizations, and from a more practicalperspective, it is also necessary to identify and examine specific problems that occur in IP activities, with the aim
to increase the effectiveness of IP activities.
This committee is organized with people engaged in pioneering IP activities and activities forindustry-academia collaboration at universities. The committee members reported the ongoing initiatives andfuture visions at their universities, and held discussions on various issues with expert members from the legal
and industrial communities.

Ⅰ Introduction
Steady progress has been made so far,through joint efforts of the public and private
sectors, toward establishing systems for the
management and utilization of intellectual
property (IP) at universities, with the aim to
spread and make use of research results. A
number of universities have established IP
departments and formulated IP policies and otherrelated rules, raising their awareness of IP
significantly and filing more patent applications
with respect to research results.
However, if we regard IP activities asconstituting an intellectual creation cycle thatstarts from creation and leads to protection andutilization, we must say that IP activities atuniversities, which have thus developed, are stillin the process of nearly finishing the first stage
from creation to protection.
For the future, universities should graduallyshift from the first stage of raising theirawareness of IP and filing applications to thesecond stage of obtaining useful rights andlicensing technology, while establishing systems
and operations for carrying out IP activities
independently.
When discussing practical issues in an effort
to sustain IP activities at universities, we should,
above all things, take into consideration theessential role of universities as research
institutes for educational and academic purposes.
In other words, the basic principle of IP activities

IIP Bulletin 2006

at universities should be that universities mustcarry out IP activities without jeopardizing theiressential role as educational and academic
research institutes, and results from suchactivities must be used to further improve theeducational and research environments atuniversities.
Also, considering that IP activities atuniversities largely depend on the size andregional characteristics of each university as wellas its internal research organization, it isimportant to encourage universities to takeindependent measures based on their individual
characteristics, rather than unifying theiractivities into a standard model.
It is also necessary to define the significanceof IP activities at universities broadly and toevaluate the results of such activities fromvarious perspectives. Since the original purposeof IP activities at universities is to spread andmake use of research results, universities should
not aim only at increasing the number ofapplications or rights. However, it is alsoquestionable to regard IP activities at universities
as profit-seeking activities, having excessive
expectations on royalty income.
Basically, IP activities at universities, when
carried out as part of activities based on
industry-academia collaboration, will contributeto both the universities themselves and society invarious ways. For instance, the following issues
can be included in the scope of significance of IP
activities at universities: stimulate research● 18 ●

activities within the university; provide
opportunities to conduct practical education andresearch; acquire a higher reputation in society by
spreading research results made by the university
throughout society; develop human resources
well versed in IP; and achieve regional
development through the vitalization of industry.
While universities themselves are required
to recognize such aspects of IP activities, weshould make efforts to build internal and external
support systems to help them carry out IP
activities sustainably and independently.

Ⅱ

Initiatives toward IP Management
and Utilization at Universities

1

Current status and problems of IP
management and utilization: Tohoku
University

Upon incorporation, Tohoku University
decided that IP arising from research results
achieved in the university should belong to theuniversity. An important factor in IP management
at a university is whether the university can use
its IP as a support tool to increase its researchability and educational ability.
Based on its policy on industry-academia
collaboration, Tohoku University is now working
toward building a framework in which it can exert
its strength as a comprehensive university. As theprimary principle for obtaining and utilizing IP,
the university pursues “utilization in society,”
which means that it aims to carry out IP activities
so that its IP will not remain as dead stock but
will be widely used at home and abroad.
Tohoku University has made achievements
in its IP activities to date; the IP management
system that it has established is capable ofdealing with the amount of operations expected
before incorporation, with 483 inventions
reported and 313 applications filed in FY2004.
The number of inventions reported in FY2005
increased over the previous year, which suggeststhat the university is nearly finishing developing
its IP management system. One characteristic of
Tohoku University’s IP activities is that theuniversity is striving toward the high goal of
exploring how to enable both external TLOs anduniversities to exist and prosper together.
Problems facing Tohoku University in IP
management and its responses are discussed
below, focusing on the following five tasks.
(i) Develop the understanding of IP activities
within the university and build a support

system(ii) Strengthen collaboration between theuniversity and TLOs(iii) Formulate IP strategy with emphasis on IP
utilization(iv) Promote joint research and contract
research(v) Establish operational procedures for trade
secret management within the university
Having established the Office of Research
Promotion
andIntellectual
Propertyin
September 2003, Tohoku University held
repeated discussions, and integrated the office
into the New Industry Creation Hatchery Center(NICHe) in Aobayama in June 2005, so as tostrengthen its functions to promote IP
management and industry-academia collaboration.
Currently, various activities are being carried out
through concerted efforts of the Development
Planning Department (first floor), the Research
Promotion Department, the Intellectual Property
Department, the Industry-Academia Collaboration
Division of the Research Cooperation Department,
and the TLO (second floor). Also, with theobjective to further enhance the university’sfunctions to encourage industry-academia
collaboration, the Council for Promotion ofIndustry-Academia
Collaboration
willbeestablished in April 2006 as an organization where
all functions to encourage industry-academia
collaboration within the university will beconcentrated, with the university’s executive vicepresident for research taking the chair.
After three years’ progress in the project forthe development of the intellectual property
headquarters, it is about time for Tohoku
University to launch the formation of an original
IP management model. In order to develop an IP
management model applicable to an incorporated
university, Tohoku University is working toward
establishing a system to enable the university
itself to own and manage IP, and strategically
implementing the creation, management, andutilization of IP, while considering the possibilityof achieving financial independence after thecompletion of the modeling project.
Efforts should be made to ensure effective
use of the capabilities of individual organizations
through restructuring, and to identify problems
correctly and take appropriate action.

● 19 ●IIP Bulletin 2006

2

Initiatives
forIndustry-Academia
Collaboration: Tokyo University ofAgriculture and Technology

The Center for Innovation and Intellectual
Property (CIIP) was born from the Cooperative
Research Center established in FY1988, throughreorganization when the Tokyo University ofAgriculture and Technology was designated forthe project for the development of the intellectual
property headquarters by the Ministry of
Education, Culture, Sports, Science andTechnology (MEXT) in FY2003, and it wasincorporated in FY2004. The CIIP has an
incubation facility and a venture businesslaboratory. As a result of this organizational
reform, comprehensive and strategic measures
were implemented to encourage industrygovernment-academia collaboration and topromote the creation, protection, and utilizationof IP with the maximum use of external humanresources. In August 2005, the university’sIntellectual
Property
Headquarters
wasdesignated as the Super Industry-GovernmentAcademia Collaboration Headquarters. Now theuniversity has finished building a foundation tofurther contribute to the development of theJapanese economy and society by promoting joint
research systematically and acquiring competitive
research grants actively.
The Super Industry-Government-Academia
Collaboration Headquarters was established as thestrategic headquarters for industry-governmentacademia collaboration in cooperation with theInstitute of Symbiotic Science and Technology,
with the CIIP playing a core role, and theuniversity’s president serving as the chief.
IP liaison staffs are mainly engaged inmatching external needs with internal resources
for the purpose of discovering and creating
demand for joint research and contract research.
Research coordinators are assigned to eachsection or office of the Innovation Division inorder to provide continuous support for various
research activities such as selecting themes ofapplied research from the results of basic
research, making arrangements for joint research,obtaining rights for research results, andpromoting joint research and technology licensing
arising from patents. The IP Division is engaged
in the creation and acquisition of IP, information
management, technology licensing, and education.
The Office for Regional Collaboration works, incooperation with the IP Division, to promotecollaboration with the national and local

IIP Bulletin 2006

governments and acquire agreements for joint
research and contract research. The Coordination
Office for Comprehensive Strategy develops
activity strategy and coordinates activities of
the center as a whole. The Contract andAdministration Office is in charge of providing
support for research and handling administrative
work relating to industry-academia collaborationand contracts.
In the field of industry-academia collaboration,
the CIIP is engaged in liaison, the creation of joint
research, incubation, technology licensing, IP
activities, and human resource development.
TUAT TLO Co., Ltd., takes charge of technology
licensing under contract with the university.
3

Initiatives
forIndustry-Academia
Collaboration and IP Management andUtilization: Tokyo Institute of Technology

Points and features of the initiatives forindustry-academia collaboration and for IP
management and utilization at the Tokyo Instituteof Technology are as follows.
(1) After incorporation, the institute changed its
principle for dealing with IP so as to attribute IP
to the institute. As a basic policy for industryacademia collaboration and for IP management
and utilization, the institute has advocated amodel for industry-academia collaboration withemphasis on joint research, which is centered on
the “IP-based intellectual creation spiral,” and has
established a framework and carried out various
activities in accordance with this model.
(2) The institute established the Office ofIndustry Liaison (OIL) as a central organization
for industry-academia collaboration and for IP
management and utilization. The OIL was headedby the institute’s Executive Vice President andoperated by more than 50 employees recruitedfrom outside the institute.
A division specialized in handling contractual
affairs relating to joint research and contract
research was established within the OIL, which
set a precedent for other universities andinstitutes in Japan.
About 500 inventions and 600 researchcontracts that occur each year were all handled by
the OIL in a centralized manner instead ofindividual divisions concerned, so as to ensure
consistency in operation throughout the institute.
More than ten coordinators play an important rolein going between companies and teachers.
(3) The principle of attributing IP to the institutehas been established within the institute, and IP● 20 ●

awareness among teachers has increased to asatisfactory level. The OIL entered into a service
support contract with the Tokyo Institute ofTechnology TLO, and has been implementing thewhole process of IP management and utilization(selection and evaluation of inventions, filing of
applications, and licensing) through close
cooperation. In this process, the institute itself isin charge of selecting and evaluating inventions
and filing applications, while entrusting licensing
activities, such as marketing the institute’s
patents and coordinating contract terms withpartner companies, to the TLO that has abundant
experience and expertise in this field.
(4) According to the model for industryacademia collaboration with emphasis on joint
research, the institute proceeds with various
projects for research cooperation with companies.
It has developed an original prototype for joint
research and contract research through active
efforts for improving research systems, and madeflexible arrangements to coordinate contract
details.
Furthermore, the institute has launched a
new initiative to promote systematic collaboration
with industry. Currently, it carries out large joint
research projects based on collaboration with
manufacturing companies, and also plans andpromotes large joint research projects based oncollaboration with non-manufacturing companies(e.g. trading companies). It also works to promotecollaboration with SMEs and local communities
and supports venture companies.
(5) For the future, the institute aims to improve
services for companies by drastically enhancing
its liaison functions, and makes preparation inorder to integrate the TLO’s licensing functions
into the OIL in FY2007.
4

Initiatives for IP Management andUtilization:
UniversityofElectroCommunications

The Intellectual Property Office of the
University of Electro-Communication wasestablished in August 2003 with financial support
from the government, and since then, it has beenworking toward achieving effective protection andutilization of the university’s IP, in cooperation
with the university’s TLO, Campus Create Co.,Ltd.
Basically, the Intellectual Property Office, as
an internal organization, takes charge of obtaining
rights, while the TLO, as an external organization,
takes charge of licensing the university’s

technologies and rights. However, on acase-by-case basis, the office and the TLO
cooperate with each other in selecting inventions
and licensable technologies.
About one year after the establishment of
the office, the university had almost finisheddeveloping its IP management system. The
question that still remains is how to increase thevalue of IP and achieve effective management andutilization of IP. After two and a half years having
elapsed since the establishment of the office, theuniversity should now get back to its basic
mission and tackle this question, which also
involves various issues within the university,
such as activities for raising IP awareness,
education for inventors, TLO functions,reorganization of the IP management andutilization system, and fund raising. Taking theseissues into account, the university has started
discussion toward system improvement for the
next stage.
In the main text of the study report, we
discussed the outline of the Intellectual Property
OfficeoftheUniversityofElectroCommunication, the current status and problems
in the three stages of the project, and themeasures and policy for the future.
We also addressed the issue of how to handle
IP under joint research contracts between
universities and companies, which posed a
serious challenge to national universities afterincorporation. The university reviewed its
conventional format for a joint research contractand developed a new format in order to ensure
flexibility both for universities and companies.
With this new contract format, negotiations forjoint research contracts have been expedited.
The new contract format has the following
features: (i) the inventor shall basically beentitled to own rights for his invention; (ii) where
the university solely owns rights, it shall grantright of first refusal (RFR) to the partnercompany; (iii) in the case of rights jointly ownedby the university and the partner company, thecompany shall pay the university royalties ascompensation if it exercises the rights
exclusively.
Although the royalty issue still remains
between the university and companies, it does
not cause problems so frequently as before in
negotiations, because both parties have wellunderstood the reality of joint research andgained negotiation experience.
However, there are still many issues to beresolved in order for the Intellectual Property● 21 ●IIP Bulletin 2006

Office to accomplish the university’s basic
mission and contribute to society.
5

Actual Situation and Problems ofIndustry-Academia Collaboration and IP
Management and Utilization: Yamaguchi
University

At the halfway point of the project for thedevelopment of the intellectual property
headquarters, we reviewed, in the main text ofthe study report, the achievements andcharacteristic initiatives at Yamaguchi University,and suggested important issues in IP
management and utilization at universities, with
our views on such issues.
Regarding the first subject of review relating
to the “development of policy and regulations,”
we outlined (i) the existing regulations on
employee’s inventions and (ii) the current statusof management of trade secrets, focusing on theimportance of the use of “laboratory notebooks.”
The second subject relates to the “handling of IP
and various contracts.” On this subject, we madethe following recommendations: (iii) the royalty
issue should be resolved, and flexible joint
research contracts should be concluded; (iv) labor
cost for students who participate in joint research
projects should be secured under joint researchcontracts; and (v) the university should
demonstrate its originality when working with
SMEs and venture companies. The third subject
is the “future of the intellectual property
department.” For the next stage after thecompletion of the project for the development of
the intellectual property headquarters, we
discussed future tasks while taking into
consideration (vi) the importance of viewpoints of
IP business for universities and (vii) the
relationship between Yamaguchi University andits TLO.
Next, we provided detailed explanations andexample cases, focusing on the three important
issues that not only Yamaguchi University but
also many other universities would face in the
future. The first issue relates to “responsible
commitment of universities.” In this context, weoutlined (viii) the interest in “property” ofuniversities, and then listed (ix) financial
problems that should be noted when designing IP
business models. We also pointed out (x) the
importance of human resource development to beundertaken under the initiative of each university
in a planned manner. Regarding the second issue
relating to “management of trade secrets and

IIP Bulletin 2006

measures implemented by the university,” wedescribed the following representative measures
actually
implemented at the Yamaguchi
University: (xi) improvement of the management
system for trade secrets in relation to master’sthesesandgraduationtheses;(xii)
recommendation of the development and use of“laboratory notebooks”; (xiii) management oftrade secrets and a students’ confidentiality
pledge. The third issue is the “future of theintellectual property headquarters and the TLO.”
On this issue, we suggested five possible patternsof the relationship between these organizations,and briefly outlined characteristics of eachpattern.
Throughout the section on Yamaguchi
University, we stressed that “universities andinstitutes should be responsible for tackling
various issues on industry-academia collaboration
and IP.” In particular, we pointed out theimportance of formulating business plans andoperational improvement plans quantitatively bygrasping uncertain factors numerically, such as IP
costs and the potential value of IP. We also statedthat universities should formulate definitive plans
for securing human resources. In the course ofbuilding an intellectual creation cycle based onthese plans, it is necessary to deepen mutual
understanding between industry and academia
and encourage flexible responses and positive
actions by both parties.
6

IP Management and Utilization: Kagawa
University(1) Introduction
Kagawa University started discussion on IP
management and utilization in FY2002, andestablished and began operation of the Central
Office for Creation and Transfer of Intellectual
Property in FY2004. In this section, we consider adesirable framework for IP management andutilization that is suitable for regional small-sized
universities, referring to the achievements madeat Kagawa University in one year since theestablishment of the central office.
(2) Organizational structure
Kagawa University is a regional, small-sized
university with only 300 faculty members inscience and limited operational funds. For thisreason, the university organized and operated thecentral office according to the following
principles:- Establish a small-sized office;● 22 ●

--

Achieve and sustain balance between
revenues and expenses relating to patents bycarrying out basic IP activities, while aiming
to benefit the university with patents that willproduce huge profits;
Establish a small-sized management systemthat is suitable for an assistance organization
for a small-sized university after incorporation.

(3) Operation of the central office
The basic principle for operating the central
office, which was employed on a trial basis andestablished in FY2004, is to achieve a small-sizedmanagement system, by actively promoting joint
efforts with companies to file applications forapplied patents and transferring such patents tocompanies for profits.
(4) Examination and negotiation of researchcontracts
The central office is also in charge of
examining and negotiating research contracts. For
the benefit of research personnel, Kagawa
University aims to conclude research contracts
that are characterized as follows: (i) know-how is
excluded from the contract coverage; (ii) teachers
are required to instruct students to keep
confidentiality but are not held liable for breach ofconfidentiality by students; (iii) in the case of
joint applications, each party’s cost burden is notdefined based on the party’s share in rights; (iv)royalty is specified as price for inventions; (v) the
prohibition period for making presentations on
research results is long, and such presentations
may be made only for a limited period.
(5) Expenses for the operation of thecentral office
We simulated operational expenses thatwould be incurred five years from now when theoperation of the central office would be close tobeing established. By striving to maintain theprinciples of (i) promoting active efforts to file
joint applications with companies, (ii) selling out
about half of joint patents to the partner companies,and (iii) setting the upper limit of the number ofpatent applications to be filed by the university
independently each year to ten, the university will
be able to achieve balance between revenues andexpenses relating to patents, and will be able tosustain the operation of the central office.

7

Current Status and Problems of IP
Management
andUtilization,
andRecommendations: Tokai University(1) IP management organization at Tokai
University
At Tokai University, the Head Office ofIntellectual Property Management takes chargeof management and utilization of IP in acentralized manner. The head office wasestablished in the Shonan Campus andadministers a union consisting of Tokai University,
Kyushu Tokai University, and Hokkaido Tokai
University.
(2) Development of IP-related organizations
Since its establishment in 1946, Tokai
University has engaged mainly in research,education, and social contribution, while placingemphasis on intellectual property, and now it hasdeveloped necessary IP systems and regulations
and enhanced IP-related organizations throughthe process of trial and error. The following
organizations are affiliated with the head office.
(i) Comprehensive Research Center: comprehensive
administration and coordination for IP activities,
including research, industry-academia collaboration,and joint research(ii) Intellectual Property Committee: consultation
on IP issues at the request of the head office(iii) Unified Education Committee, TIP Committee:
development and promotion of educational plans
for the unified education system from kindergarten
to elementary school, junior high school, highschool, and university.
(iv) Tokai University Olympic: hands-on education
to encourage intellectual creation in theuniversity(3) Activities relating to IP management
and industry-academia collaboration(i) Routine activities
By employing external IP experts as project
managers, the head office aims to raise the speed
and increase the quality of the IP management
process, which covers the selection of inventions,filing of patent applications, and requesting ofpatent examinations. In the stage of patentutilization, the head office formulates contracts
for licensing and joint research, and acts as anagent or provides support for negotiating withpartners.
(ii) Development of legal framework for IP(iii) Raising awareness of IP culture
The head office endeavors to develop IP● 23 ●IIP Bulletin 2006

culture, which has been nurtured since theestablishment of the university, and raises
awareness of IP culture among not only researchpersonnel and professors but also undergraduatesand postgraduates.
(iv) Human resource development
In order to establish and further develop IP
management at the university (creation,
protection, and utilization) and industry-academia
collaboration, it is necessary to foster experts
proper to the university.
(v) Support for industry-academia collaboration
The head office promotes support forindustry-academia collaboration in various fields
such as science and engineering, medicine, health,and human resource development, while paying
attention to the needs of companies andassociations in each region.
(vi) Creation of an international network
The head office promotes the creation of aninternational network via the International
Strategic Office.

in the Chugoku Region released a report topresent their requests in regard to the IP policies
and contract formats developed by the fivenational universities in that region. The working
group, composed of businesses in the region,
presented 11 specific requests, focusing on issues
on joint research contracts, which may have thegreatest influence on them.
In the main text of the study report, we
reviewed the background and outline of theactivities of the working group (Chapter 1), andsummarized the specific requests for thenational universities based on the working
group’s report (Chapter 2). In Chapter 3, we maderecommendations for national universities in local
areas from the perspective of supporting andrevitalizing local SMEs. In particular, among thespecific requests presented in the working
group’s report, we focused on six requests thatseem to be also applicable to national universities
in other regions and are still significant today.
The outline of each request is as follows.

(4) Future tasks(i) Providing support to raise the overall
research level(ii) Shifting emphasis from quantity to quality inthe process of filing applications and obtaining
rights(iii) Taking flexible measures in response to theincrease in the amount of joint research and joint
filings with companies, e.g. the introduction ofresearch grants(iv) Developing and making effective use ofhuman resources(v) Strengthening collaboration between thecampuses and the three universities in the unionthat are scattered across the country(vi) Strengthening
collaboration
withandcontribution to local communities(1) Transfer of the right to file applications
for joint inventions to companies
Where inventions jointly created by auniversity and its partner company do not satisfy
the university’s filing standards or the university
cannot afford to pay filing costs, the university
should, at the request of the company, activelytransfer its share in rights to the company.
Suggestions were also made in regard tocompensation for such transfer.

(5) Recommendations
We recommend that the government’s
support measures for IP management andutilization at universities and for industryacademia collaboration should be reviewed interms of selection of the entities eligible for
grants, human resource development, andevaluation of achievements.

Ⅲ Requests for National Universities
from the Industrial Community
in the Chugoku Region
In November 2004, the industrial community

IIP Bulletin 2006

(2) Preferential license
With respect to the results of joint research,
universities should not grant license to a third
party other than the partner companies for acertain period; during such period, universities
should grant an exclusive license to the partnercompanies at their request.
(3) Royalty for jointly-owned IP
Royalty should be paid in cases where
universities do not use IP that they own jointlywith companies, and such royalty should be paid
from the profits that the partner companies havegained by using the IP. The amount of royalty
should be calculated based on the amount of
profits gained by the companies, while
comprehensively taking into consideration
various factors such as the existence of patentrights, the strength and importance of patentrights, the existence of other patents in use, andthe degree of contribution of patents to profits.

● 24 ●

(4) Sharing of costs for joint applications
It is questionable that companies bear thewhole amount of costs for joint applications.
Appropriate conditions should be established forcost sharing.
(5) Flexibility of contracts
Flexible arrangements should be made forjoint research contracts. Specifically, contractual
terms should be more diversified and each
university’s ability to handle contractual affairs
should be improved.

basic understanding of universities and IP. This
study report is written by people in positions ofresponsibility at the intellectual property
headquarters of several universities, regarding
the IP initiatives taken at each university. We
hope that this report will be helpful referencematerial for universities to consider for their IP
activities in the future.
(Researcher: Takahiro HIRAIWA)(6) Consideration to SMEs
Universities should give consideration
to SMEs that have poor experience in dealing
with IP, by providing support on IP issues andcontractual affairs and obtaining “informed
consent” from SMEs.

Ⅳ Conclusion
Looking at universities that have worked
towarddeveloping
intellectual
property
headquarters and other IP-related organizations
so far, we find that some of these universities
falsely or insufficiently understand IP laws andother related regulations. In order to promote thecreation and utilization of IP at universities, it isnecessary to deepen their understanding of IP ingeneral, including IP laws.
The Institute of Intellectual Property
discussed the handling of IP at universities in two
consecutive years since FY2004. In FY2005,
based on the study results in the previous year,
we examined the initiatives relating to IP taken
by several universities.
The underlying concepts of this study can besummarized as follows: (1) IP activities atuniversities should be promoted, while taking
into consideration the essential role ofuniversities as research institutes for education;(2) in light of autonomy in universities
guaranteed under the Constitution, individual
universities should take the initiative inpromoting IP activities; (3) IP activities do notalways economically benefit universities; (4) IP
activities should be promoted based on theunderstanding of each university as a whole,because such activities are not always intended tobring about economic benefits to universities, andthey are likely to impose an economic burden onthem.
It is impossible to promote IP activities atuniversities continuously without examining thecurrent status of such activities based on the● 25 ●IIP Bulletin 2006