17

Patent Applications for Inventions Made by University
Researchers in the Field of Biotechnology

The 2006 revision of the Fundamental Law of Education clarified that universities were expected not
only to engage in education and research activities but also to contribute to society. Since April 2004, in
which national universities were transformed into independent administrative institutions, an increasing
number of universities have adopted an intellectual property policy of claiming ownership of intellectual
properties created by their researchers in principle (institutional ownership). As a result, patentapplications owned by universities have been on the rise.
Despite such an intellectual property policy, some universities still allow their researchers to claim
ownership of their inventions (researcher ownership). Furthermore, there are universities that have not
adopted any intellectual property policies. Some universities always recognize researcher ownership of an
invention and do not recognize institutional ownership thereof. In these cases, it may be presumed thatmany of the inventions made by university researchers are owned by those researchers or by thecompanies that conducted the research jointly with those researchers.
The purpose of this report is to outline the characteristics of patent applications for inventions madeby university researchers in the field of biotechnology by database analysis and a domestic interview
survey and to conduct a comparative analysis on the patent applications’ ownership. Based on the analysis
results, this report explores how to facilitate transformation of university research findings into intellectual
properties and make effective use of those properties for the benefit of society. The goal of this study is tomake constructive proposals.

This study was conducted as a part of the
JPO’s project to promote studies on theintellectual property activities of universities. Inview of the increasing importance ofbiotechnology-related research findings made byuniversities and other institutions, this study
explores how to facilitate transformation of suchfindings into intellectual properties and makeeffective use of those properties for the benefit ofsociety. The goal of this study is to makeconstructive proposals.

Ⅰ Introduction
The 2006 revision of the Fundamental Law
of Education clarified that universities were
expected not only to engage in education andresearch activities but also to contribute tosociety. Since April 2004, in which national
universities were transformed into independentadministrative institutions, an increasing numberof universities have adopted an intellectual
property policy of claiming ownership ofintellectual properties created by their researchers
in principle (institutional ownership). As a result,patent applications owned by universities havebeen on the rise.
Despite such an intellectual property policy,
some universities still allow their researchers toclaim ownership of their inventions (researcher
ownership). Furthermore, there are universities
that have not adopted any intellectual property
policies. Some universities always recognize
researcher ownership of an invention and do notrecognize institutional ownership thereof. In
these cases, it may be presumed that many of theinventions made by university researchers are
owned by those researchers or by the companies
that conducted the research jointly with thoseresearchers. Those who work for the intellectual
property departments of universities (science)point out that a relatively large number of patentapplications are owned by individual researchers
in the field of biotechnology.
In order to effectively manage and exploit
intellectual properties of universities and otherinstitutions, it is necessary to conduct a
multi-perspective study on the researcher ownershipof patents at universities and other institutions.
The purpose of this report is to outline thecharacteristics of patent applications forinventions made by university researchers in thefield of biotechnology and to conduct a
comparative analysis on the patent applications
owned by individual researchers and those owned
by universities or other institutions. Based on theanalysis results, this report explores how tofacilitate transformation of university research● 124 ●IIP Bulletin 2009

findings into intellectual properties and makeeffective use of those properties for the benefit ofsociety. The goal of this study is to makeconstructive proposals.

Ⅱ Patent Applications for Inventions
Made by University Researchers
in the Field of Biotechnology
1

Results of database analysis(1) Analysis method
The Japan Science and Technology Agency(JST) makes available a database, the Directory
Database of Research and Development Activities(ReaD), on its website. From the database, dataon biotechnology researchers of national, public
and private universities was extracted. In
addition, from the lists of officers publicized on
the websites of biotechnology-related academic
societies (The Japanese Biochemical Society, The
Pharmaceutical Society of Japan, Japan Society
for Bioscience, Biotechnology, and Agrochemistry,
and The Molecular Biology Society of Japan), dataon university researchers was extracted. In thisway, we created a list of 18,224 researchers intotal.
Based on this list, the patent applications forthe biotechnology-related inventions made by
those university researchers were extracted fromthe publicized patent gazettes issued between
1998 and 2007 (10 years). A total of 7,246 patentapplications were extracted and subject toevaluation and analysis for this study. In thisstudy, the “field of biotechnology” means C12 toC14 of the International Patent Classification(IPC).
Based on the extracted patent information,
the state of the ownership of inventions made byuniversity researchers was evaluated andanalyzed with the focus on such details as
whether the ownership of an invention was
vested in a university or an individual researcher,whether the ownership of an invention was
assigned to another entity such as a company thatjointly conducted the research, and whether aninvention was jointly owned with anotherresearcher or company, etc.
For the convenience of evaluation andanalysis of the extracted patent information, theapplicants (the owners of inventions) weredivided into four categories, i.e., “university,”“researcher,” “company,” “others.”

The institutions categorized as “others”
include the Japan Science and Technology Agency(JST), and its predecessor, the Japan Science andTechnology Corporation, and other entities thatfall under the category of neither “university,”“researcher,” nor “company.”
In the figures contained in this report, if theindication of an ownership category contains themark “+,” it means that the applicants stated
before and after the mark are joint applicants.
(2) Results of the database analysis(2)-1 Results of ownership analysis byapplication year
Thanks to the various measures with regard
to intellectual property activities of universities,
the number of patent applications for inventions
owned by university researchers in the field ofbiotechnology had been on the rise until 2004
(see [Summary] Fig. 1).
The number of applications owned byuniversities had also constantly increased from1996 to 2005. The number of applications jointly
owned by universities and companies increased
from 2002 as well.
In particular, with regard to the applications
filed in 2005 (there is a possibility that many of
the national publications(*1) and re-publications(*2)
were not publicized until the end of 2007), a
comparison between the applications filed in 2005
and those filed in or before 2004 shows that the
number of patent applications owned byuniversities exceeded the number of applications
owned by companies for the first time. The year
2005 was a milestone for joint applications as well.
In that year, the number of applications jointly
owned by universities and companies surpassed
the number of applications jointly owned byresearchers and companies for the first time. (see[Summary] Fig.2 and Fig.3)
The data on the applications filed in 2005 orthereafter and publicized by the end of 2007shows that the applications owned by researchers
accounted for 5.8%, those owned by companies
accounted for 27.4%, and those jointly owned byresearchers and companies accounted for 6.5%.
(see [Summary] Fig. 4)(*1) Japanese translation of PCT international application(*2) Domestic re-publication of PCT international application● 125 ●IIP Bulletin 2009

[Summary] Fig. 1. Number of applications (all university inventions)

Number of出願件数
applications

1200

1000

800

600

400

200

0
'96

'97

'98

'99

'00

'01

'02

'03

'04

'05

Application year
出願年

[Summary] Fig. 2. Number of applications owned by applicants who fall under a single
ownership category (all university inventions)

500

Number出願件数
of applications

450

大学
University
個人
Researcher

400

Company
企業

350

Others
その他

300
250
200
150
100
50
0
'96

'97

'98

'99

'00

'01

Application
出願年 year● 126 ●IIP Bulletin 2009

'02

'03

'04

'05

[Summary] Fig. 3. Number of applications owned by applicants who fall under multiple
ownership categories (all university inventions)

500

Number出願件数
of applications

450
400

大学+個人
University+ Researcher

350

大学+企業
University+ Company

University
大学+その他 + Others

300

Researcher+ Company
個人+企業

250

Researcher
個人+その他 + Others

200

Company
企業+その他 + Others

150

Other
左記以外than the above

100
50
0
'96

'97

'98

'99

'00

'01

'02

'03

'04

'05

Application
year
出願年

[Summary] Fig. 4. Ownership breakdown of applications filed in or after 2005 and publicizedby the end of 2007 (all university inventions)
Researcher +Others
個人+その他
0.5%
0.5%
Researcher
個人+企業+
Company
6.5%
6.5%
大学+その他
University +4.6%
Others
4.6%

大学+個人
University +0.1%
Researcher
0.1%

Researcher +企業+その他
Others3.9%
3.9%

Other than the above
上記以外
2.4% 2.4%

University
大学
Researcher
個人
Company
企業

大学
University
27.9%
27.9%

Others
その他
University+ Researcher
大学+個人

University +大学+企業
Company
10.2%
10.2%

University+ Company
大学+企業
University+ Others
大学+その他

Others
その他
10.7%
10.7%

Researcher+ Company
個人+企業

企業
Company
27.4%
27.4%

個人
Researcher
5.8%
5.8%

Researcher+ Others
個人+その他Company+ Others
企業+その他
Other
than the above
上記以外(2)-2 Results of analysis of ownership bytechnology classification (the first FI)
The analysis of the patent applications forinventions in the top 10 largest fields in terms ofthe number of applications filed in the respective
fields shows that the proportion of applications

owned by companies was relatively high in all
fields except for A01K (animal husbandry) and
A01H (new plants) in and before 2004. However,since 2005, the number of applications owned byuniversities has accounted for a larger proportion
than in or before 2004 in every field except for● 127 ●IIP Bulletin 2009

C12M (apparatus for enzymology or microbiology).
(2)-3 Results of analysis of the ownership of
the applications for inventions made by
the top 30 researchers in terms of thenumber of applications they preparedIn and before 2004, the proportion of
applications owned by companies was relatively
high. Since 2005, the proportions of applications
owned by universities and those jointly owned byuniversities and companies have been on the rise.
However, even after 2005, some patentapplications were owned by non-university
entities such as companies. As far as the top two
researchers in terms of the number ofapplications are concerned, the proportion of theapplications owned by companies has remained
high even since 2005. In the case of the top
researcher, six of his applications were filed by aresearch and development-type venture company.
With regard to the second researcher, 14 of his
applications were filed by five private companies.
In the case of the researchers who have filed
a relatively large number of applications since2005 and ranked 13th, 17th, and 21st in terms ofthe number of applications (Researchers No.13,
No.17, and No.21), all of the applications ofResearcher No.13 and Researcher No.21 were
owned by their respective universities. In thecase of Researcher No.17, ten applications that heprepared were company-owned. The proportionof these company-owned applications was
relatively large. All ten applications were filed bya single private company.
2

Results of a domestic interview survey(Universities)(1) Survey method
In order to conduct a multi-perspective
examination of the results of database analysis, aninterview survey was conducted with domestic
universities (ten national universities, sevenprivateuniversities,
and
three
publicuniversities). The survey covered such topics as
the current state of ownership of patents, etc.,
and the future direction of patent ownership.
(2) Results of the interview survey(2)-1 University patent rules
All of the surveyed universities had theirrespective intellectual property policies andclaimed institutional ownership of patents, etc., inprinciple.
Many of them responded that they made it arule to notify an invention as soon as “theinvention is made.” However, many of them
responded that such a notification is often done
before “the invention is presented at an academic
meeting” in reality.
(2)-2 Current state of ownership of intellectual
properties(2)-2-1 In the case of research independently
conducted by a university
The surveyed universities were asked who
owned the inventions made as a result ofresearch independently conducted by a university.
Eighteen universities responded that a majorityof the inventions were institutionally owned (theassignment rate is 50% or more at those
universities). One university responded that amajority of the inventions were owned byresearchers. One university responded that it had
a different ownership pattern.
All of the surveyed universities attributed
the researcher ownership of those inventions totheir decision not to request the assignment of
the inventions. Some universities mentioned thatthe decision was made in consideration of thepatentability and marketability of the inventions
as well as such factors as the “lack of effective
embodiments of the inventions due to theirearly-phase status” and “cost-related issues.”
In response to a question about the merits ofinstitutional ownership, many of the surveyed
universities responded, “It promotes joint
research and commissioned research,” “Itfacilitates
industry-academia
collaboration
through central management of inventions, ” “It
strengthens protection for the rights ofuniversities and inventors,” etc. As demerits,
many of them pointed out that “it is costly,” “it isdifficult to exploit effectively.”(2)-2-2 In the case of research jointly conductedby a university and a company
With regard to research jointly conducted bya university and a company, many universities
responded that they determined ownership
allocation based on the contribution ratio of theinventor (the ownership allocated to theuniversity inventor would be vested in theuniversity). Some universities responded thatinventions made through joint research were
jointly owned in principle. Some universities
responded that they sometimes chose to assign
certain patents such as defensive patents for afee.

● 128 ●IIP Bulletin 2009

Many universities responded that the rate ofassignment to universities (i.e., the rate of
institutional ownership) was higher in the case ofuniversity-company joint research than in thecase of university’s independent research.
When asked about the reason why a certain
invention is owned by a researcher, many
universities responded that it was because “Theuniversity decided not to request the assignmentof the invention.” Some universities responded
that almost none of the inventions made as aresult of joint research were owned byresearchers. Other universities responded that
researchers rarely file patent applications fortheir inventions.
To a question about the merits ofinstitutional ownership, many universities
responded, “The conclusion of an agreement
would not negatively affect the university” and“In general, a company prefers joint application
with a university (institution).”With regard to the reasons why a company
prefers joint application with a university(institution), many universities responded that it
was because researcher ownership would be
difficult to handle due to the different levels of
understanding among university inventors aboutbuilding a contractual relationship. Many
universities responded that one of the demeritsof institutional ownership was additional
procedural burden.
(2)-3 Technology transfer

cause
inconvenience.”
For
example,theuniversities
mentioned,
“When
the
university-based venture company seeks financing
from a financial institution such as a bank, thepossibility of obtaining financing and the amountof financing depends on whether it owns the rightor merely have a license.”
As the demerits of researcher ownership,some universities pointed out that the ownershipwould be subject to general succession in thecase of the inventor’s death.
(2)-3-2 In the case of an application filed jointlywith a company
With regard to technology transfer, many
universities have adopted the policy oftransferring an invention made as a result of
university-company joint research to the company,
i.e., a joint patent applicant, on the condition thatthe company shall exploit the invention. Some
universities mentioned that the acquisition ofpatents would promote further joint research
activities.
As the merits of institutional ownership of an
invention, some universities pointed out that the
exploitation of the invention by the company
jointly filing an application would raise revenues
for the university. As the demerits of institutional
ownership, some universities pointed out that the
exploitation of the invention by the company
jointly filing an application had not raised any
revenues.
(2)-4 Future direction(2)-3-1 In the case of an application filed
independently by a university
Regarding technology transfer of an
invention claimed in an application filed
independently by a university, nine universities
responded that support of their respective
internal TLOs was available, while five
universities responded that support outside
TLOs was available. Some universities responded
that technology transfer was conducted by privatecompanies of technology transfer.
When asked about the merits of institutional
ownership, many universities pointed out, “Theuniversity (TLO) carries out the task oftechnology transfer,” “A company generally
prefers negotiations with an institution,” etc. As
the demerits of institutional ownership, someuniversities pointed out, “If an invention is madeby a university-based venture company
established by a university researcher, theinstitutional ownership of the invention would(2)-4-1 Ownership policy
With regard to the future policy of ownership,
all of the surveyed universities mentioned,“Institutional ownership is preferable inprinciple” and “Institutional ownership ispreferable in principle from the perspective of
support system and technology transfer.”
However, many universities responded that, due
to budgetary constrains, they planned to shiftemphasis from “quantity to quality,” “reduce theassignment rate,” “lower the rate of examination
request,” and “decrease the ratio of patents forwhich patent maintenance fees are continuously
paid.”
Some universities mentioned that it would
be difficult to decide not to request theassignment of an invention even though it might
be a reasonable decision to make, given thefinancial constraints. Some universities pointed
out that institutional ownership would be● 129 ●IIP Bulletin 2009

meaningless if the university lacks negotiation
power, contract-making skills, and sufficientfunding.
(2)-4-2 Technology transfer
With regard to the future direction of theirtechnology transfer policies, some universities
responded, “We need to enhance our marketing
ability,” “We plan to put more emphasis on
overseas markets,” etc. However, many
universities mentioned, “Universities can play
only a limited role in technology transfer
activities” and “it is difficult to make full use oftechnology transfer.”
With regard to the field of biotechnology inparticular, some universities pointed out that, due
to the time lag between the filing of a patentapplication and the commercialization of thepatented invention, an invention cannot beproperly evaluated immediately after the filing of
the application for the invention. Some
universities stated, “Acquisition of patents is ameans of inviting corporate participation in joint
research,” “We do not adopt a business model inwhich related costs are covered by license fees.
We are trying to use intellectual properties toinvite corporate investments in our research
activities and thereby make further inventions.”(2)-4-3 Sample cases of conflicts between auniversity researcher and the university
over the university’s introduction of apatent management system for inventions
made by university researchers
Many universities responded that they nolonger had major conflicts with their researchers
although some researchers were critical ofinstitutional ownership when it was introduced.
Some universities reported minor conflicts with asmall number of university researchers who
refused to assign their inventions to their
universities.
3

Results of a domestic interview survey(companies)(1) Survey method
In order to conduct a multi-perspective study
on the results of the database analysis and thedomestic interview survey (universities), we
conducted an interview survey on companies (tencompanies) to which technology had beentransferred. The survey covered such topics astheadvantages
anddisadvantages
ofresearcher-owned patents and institutionallyowned patents in transferring technologies toprivate companies.
(2) Interview survey(2)-1 University-company joint research
Many companies responded that theownership of an invention made as a result of
joint research would be determined based on thecontribution ratio of the inventor (the ownership
allocated to the university inventor would bevested in the university). Some companies
mentioned that an invention made solely by auniversity inventor was often jointly owned withthe university (institution). Some companies
pointed out that, due to the unclear criteria formaking a decision between institutional
ownership and researcher ownership, such a
decision was up to the “university’s policy” andthat some universities have even adopted thepolicy of vesting ownership in individual
researchers in principle.
As the merits of institutional ownership,
many companies pointed out, “It facilitates
explanation to the university inventor and allows
efficientestablishmentofacontractual
relationship” and “It gives a sense of security
because the consideration for an invention would
likely be determined based on the market value.”
As the demerits of institutional ownership, many
companies pointed out the time-consuming
process of concluding a contract, while they
admitted, as mentioned above, that institutional
ownership had such a merit that it would
facilitate explanation to the university inventor.
Some companies pointed out the liability forcompensatory royalty payment for the jointly
owned invention.
As the merits of researcher ownership, many
companies pointed out that it would give them ahigh degree of freedom.
(2)-2 Technology transfer in the field ofbiotechnology
In response to a question about technology
transfer of an invention made as a result of joint
research, five companies responded that they had
not yet exploited an institutionally owned
invention. Some of these companies mentionedthat it was because such an invention tends to bea product of basic joint research and therefore
takes a long time before commercialization.
As the merits of institutional ownership at
the time of technology transfer, other companies
pointed out that the consideration for an
invention would likely be determined based on● 130 ●IIP Bulletin 2009

the market value. As the demerits, they pointed
out the time-consuming process of concluding acontract and making decisions.
On the other hand, as the merits ofresearcher
ownership,somecompanies
mentioned that it would facilitate negotiations
and give them a high degree of freedom and that
it would allow the company to lead thenegotiations on technology transfer. As the
demerits, some companies pointed out thedifficulty in predicting the amount ofconsideration demanded by the university
researcher in some cases because the amount ofconsideration is determined through negotiation
with the researcher.
Furthermore, as the demerits of researcher
ownership, some companies stated that theownership would be subject to general succession
in the case of the inventor’s death and that it
would take time to reach the university inventor
after his or her retirement from the university.
(2)-3 Future direction(2)-3-1 Patterns of ownership
In response to a question about future
direction, some companies responded that
institutional ownership should prevail more
widely than researcher ownership. Somecompanies mentioned that the rights to an
invention should be assigned to a company if theinvention is going to be commercialized by thecompany. They explained the reason for theirpreference for assignment of rights by saying thatan exclusive license would not necessarily
preclude the right holder from granting a license
to a third party if the right holder recognizes thatthe exclusively licensed invention has not been
exploited for a certain period of time. Anotherreason they presented was that the amount ofconsideration and other conditions would haveroom for negotiation. Some companies mentioned
that, in the case of a company-university joint
invention, the company should be required to pay
the university compensatory royalties for theinvention only when the invention becomes
profitable.
(2)-3-2 Technology transfer
In response to a question about future
direction,
many
companies
responded,“Biotechnology-related patents (e.g., researchtools), which are often general-purpose, shouldbe treated differently from other patents such as
drug-related patents.” More specifically, somecompanies
mentioned,“General-purpose
technologies should be transferred in a
non-exclusive
manneratareasonableconsideration” and “Universities and companies
should have specialists who can distinguishgeneral-purpose technologies from the rest.”(2)-3-3 Others
Regarding the contract-making ability ofuniversities, many companies pointed out,
“Universities (TLOs) vary greatly in theircontract-making policy” and “Some universities
have no personnel who can handle contract
negotiations” since, as pointed out by many
companies, some universities had little
experience in building a contractual relationship.
Some companies said that contracts should
be made more flexible because “It takes time fora biotechnology-related invention to become
profitable,” “It also takes time to determine
which invention to commercialize,” and“Commercialization is costly.” For example, somecompanies requested more flexibility in acontract in terms of the timing of the payment ofcompensatory royalties and consideration to theuniversity, the timing of concluding a contract,etc. Some companies pointed out that
universities had increased the flexibility ofjoint-research contracts in recent years.

Ⅲ Study on How to Facilitate
Transformation of University
Research Findings intoIntellectual Properties and Make
Effective Use of Those Properties
for the Benefit of Society andProposals
In view of the current state of patentapplications for inventions made by university
researchers in the field of biotechnology, we
studied how to facilitate transformation ofuniversity research findings into intellectual
properties and make effective use of those
properties for the benefit of society. This study
was conducted on each of the three major typesof research: research independently conducted bya university, research jointly conducted by auniversity and a company, and research conductedby a university-based venture company. Based on
the findings, we presented proposals.

● 131 ●IIP Bulletin 2009

(1) Research independently conducted bya university- Promotion of further research findings byinviting corporate participation in joint research
The central management of patents byuniversities has an advantage in the effectivenessin promoting industry-academia collaboration,
inviting participation in joint research and offers
for commissioned research, and procuring
financing from outside the company as well as
raising competitive funds. On the other hand, it isdifficult to make use of inventions throughtechnology transfer by means of licensing andassignment.
Therefore, universities are expected not only
to seek technology transfer by means of licensing
and assignment but also to pursue creation offurther research findings by promoting corporate
participation in joint research conducted based on
the basic patents of the universities. Universities’
initiative in these activities should be promoted
as a means of facilitating transformation ofuniversity research findings into intellectual
properties and making effective use of those
properties for the benefit of society.
- Acquisition of useful basic patents
It is important for universities to obtain
useful basic patents. However, these days, only asmall number of useful basic patents are createdbecause universities are reluctant to bear theburden of giving a presentation as frequently as
once a year and the burden of publicizing aninterim report on the relevant projects.
In order to obtain a useful basic patent, a
researcher needs to file a patent application
containing a sufficient amount of effective data
before presenting the invention at an academic
meeting, etc. Therefore, as far as the field ofbiotechnology-related is concerned, politicalmeasures should be taken to secure enough time
to complete research. Furthermore, it would benecessary to review the current practice of
requiring presentation as frequently as once a
year and publication of an interim report on therelevant projects.
- Measures to secure financing for the cost offiling patent applications overseas
With regard to inventions related to theprojects prioritized in the Japanese science andtechnology policy, necessary measures must be
taken to prevent university’s budgetary
deficiency or JST’s situation from stopping thefiling of a patent application overseas.

- Technology transfer of a general-purpose basic
patent by means of non-exclusive licensing
In a case where a university obtains a patentin the field of biotechnology, if it is a basic patent
for a general-purpose technology such as
research tools, such a technology should be madeavailable for technology transfer throughnon-exclusive licensing at a reasonable license
fee in accordance with the principle presented in
the Guidelines for Facilitating the Use of
Research Tool Patents in the Life Sciences(March 2007: Council for Science andTechnology Policy).
(2) Research jointly conducted with a company- Flexibility of contracts for joint research
inventions
As the merits of institutional ownership,
many universities pointed out that it would allow
a university to participate in contractual
negotiations with a company on behalf of auniversity researcher so as to avoid concluding acontract that is disadvantageous to the university.
They also pointed out that it would allow auniversity to gain revenues from license fees. On
the other hand, many companies pointed out that
contractual negotiations with a university would
be more efficient than negotiations with auniversity researcher (individual) and that
institutional ownership would increase thepredictability of the amount of license fee andother costs to a certain extent. They also pointed
out that some universities would be reluctant tomodify their model contracts.
The way of handling the findings of joint
research would differ greatly from one contract toanother. In the case of a university’s
biotechnology-related patent, the patented
invention is often a product of basic research.
This is why it is difficult to determine how tocommercialize such an invention at the time offiling a patent application for the invention.
Universities
shouldrecognizethatthecommercialization of a biotechnology-related
invention tends to take a long time and a greatamount of investments despite a low probabilityof commercial success. Based on this recognition,
universities should increase the flexibility ofcontracts.
For instance, if a company requests exclusive
licensing of an invention, a university should
extend the period before starting to consider
licensing a third party on the grounds that thecompany has not exploited the invention for acertain period of time.

● 132 ●IIP Bulletin 2009

- Option for a university to file a patentapplication independently
If a university and a company file a joint
patent application for an invention made as aresult of their joint research, non-exploitation of
the invention by the company would make it
difficult for the university to exploit the invention
by means of technology transfer to anothercompany. To prevent such a situation, theuniversity should be given an option to
independently file a patent application for a joint
research invention that was made mostly by theuniversity and to give the company the firstrefusal right.
(3) University-based venture companies- System to ensure the continuation of research
activities at universities at the time of thebankruptcy of a university-based venture company orat the time of patent assignment as a result of an
M&A
The ownership of a university patent by auniversity-based venture company would facilitate
the procurement of financing from financial
institutions, etc. Despite this merit, there is the
demerit that an M&A or the bankruptcy of auniversity-based venture company could lead to apatent assignment to a third party against the willof the university. Such unintended assignment
could prevent the inventor from exploiting his
own invention.
Therefore, it would be necessary to establish
a system to ensure the academic use of
inventions by the university inventors. Under thesystem, a university should own its patents andgrant the exclusive licenses to university-based
venture companies so that the university canensure the academic use of the patented
inventions as the patentee.
(4) Proposals
about
the
universities’
intellectual property activities in general- Fostering of the awareness of university
researchers
Further discussion would be necessary
concerning such issues as how to make effective
use of universities’ research findings as a whole
for the benefit of society and how joint researchshould be. Furthermore, it would be necessary toraise university researchers’ awareness that one
way of making use of research findings for the
benefit of society is to transform those findings
into intellectual properties and commercialize
them and that one of the roles of university

researchers is to carry out such transformationand commercialization.
For example, it may be a good idea to provide
university researchers with information on example
cases of successful commercialization in the UnitedStates and other countries in order to raise theirawareness about the possibility of benefiting society
by transforming their research findings into
intellectual properties. The purpose of suchawareness-raising effort is to make university
researchers fully aware what patents could fully
exploit, in other words, what intellectual properties
could use for the benefit of society.
- Recruiting and nurturing of specialists
In the field of biotechnology in particular, it
is important to recruit and nurture specialists
who can distinguish profitable inventions fromthe rest and who can facilitate collaboration andtechnology transfer between companies anduniversities. However, it would be unrealistic to
expect all of the universities to recruit andnurture all kinds of specialists. Instead,
universities could consolidate their intellectual
property headquarters and their departments incharge of technology transfer, etc., in order tomake efficient use of their human resources.
- Example cases of successful exploitation of
inventions in Japan
Some university researchers oppose thecurrent trend of promoting transformation ofuniversity research findings into intellectual
properties and exploitation of those properties forthe benefit of society. Some university researchers
have a negative view on the university’s central
management of patents for inventions made byuniversity researchers. In order to convince themthat transformation of their inventions into
intellectual properties could benefit society, it
would be effective to inform them of example
cases of successful exploitation of inventions inJapan. A national project should be launched toestablish a research system to promotetransformation of research findings into
intellectual properties. For instance, it would berecommended to mobilize researchers in a timely
and flexible fashion in order to respond to theshortage of manpower to obtain data necessary totransform an invention into a useful intellectual
property.
(Resercher: Miki OBI)

● 133 ●IIP Bulletin 2009