Intellectual Property as the Major Power and Universities

January 14, 2004
HARAKENZO WORLD PATENT & TRADEMARK PATENT LAW FIRM
Patent Attorney Kiyoshi FUKUI

In February 2002, the Japanese Prime Minister, Koizumi made an administrative policy speech on "the nation's goal of protecting and effectively using Intellectual Properties to the nation's best interest from researches and creative works to strengthen industries with a stronger ability to compete internationally." After he made the statement, the realization of "intellectual property as the major power" has continuously been worked on.

Changes will gradually occur in universities, holding enormous amount of intellectual properties, due to this policy of making "Intellectual Property as the Major Power". In this writing, the main focus will be on this flow of the change.

The United States had progressed ahead of our country in this area. The United States' ability to compete in the industries has actually been strengthened by executing the Intellectual Property Policy. This policy had also stirred up changes in universities in the United States. In the 1970s, the TLO (Technology Licensing Office) is seen for the first time in the United States, for the purpose of licensing works of university researches. The OTL (Office of Technology Licensing) of Stanford University was especially well known. In Stanford University, it is called OTL instead of TLO.
It was founded by Niels Reimers. He is known as the founding father of technology licensing. He is also known for having licensed the already patented gene recombination discovered by Professor Boyer and Professor Coen, which brought enormous amount of profit to Stanford University. In the United States, before the Patent and Trademark Act Amendment was enacted in 1980, if the American government funds the university researches, the rights to a patent belonged only to the government. However, this changed after the amendment was enacted, and the rights to obtain patents can be granted to universities or researchers as well. As a result, it encourages the licensing of technologies developed by universities and the flourishing of venture businesses.
In Japan, before the above administrative policy speech was made in February 2002, during August 1998, the Technology Licensing Law was enforced in universities, where they began to set up TLOs. On October 1999, a combination of the Japanese version of the Industrial Revitalization Special Handling Law incorporating with the Patent and Trademark Act Clauses was enforced. It is now possible for the nongovernmental businesses to obtain patent rights from the research developments funded and inquired by the government. However, even with the policies that we have now, it is still not sufficient. More activity is hoped for in the Intellectual Properties Policy.
After the administrative policy speech was made in February 2002, the Intellectual Property Strategy Meeting was held in the following month in March, at the prime minister's residence. And during July, the Intellectual Property Strategy Overall Outline has taken its form, reflecting the basic ideas working towards the realization of "Intellectual Property as the Major Power". This Intellectual Property Strategy Overall Outline emphasized the importance of the establishment of the "Intellectual Creation Cycle".
This refers to the favorable cycle of first "creating" inventions and other intellectual creations, then secondly properly "protect" them with intellectual property rights. At last, effectively "using" them in industries and make new intellectual creations. After the Intellectual Property Strategy Overall Outline was accomplished, in March 2003, the Basic Law of Intellectual Property was taken into effect, serving as the fundamental ideas in advancing the Intellectual Property Strategy. At the same time, within the cabinet, the Intellectual Property Strategy Main Department was set up as an effort to promote the "Intellectual Creation Cycle". In July 2003, the Intellectual Property Strategy Main Department put together the "Intellectual Property Creation Protection and Usage Promoting Plan" (Intellectual Property Promoting Plan), which comprised of the Basic Law of Intellectual Property and the Intellectual Property Strategy Overall Outline. The Intellectual Property Promoting Plan corresponds to each step of the "Intellectual Creation Cycle", meaning the "Creation Field", "Protection Field", and "Usage Field". The "Creation Field" especially contains a lot of articles on "promoting the creation of the intellectual property at universities" as their themes.

Apart of these articles will be introduced below, quoting from the Intellectual Property Promotion Plan. Promoting Research Developments that Placed Importance on the Creation of Intellectual Property at Universities and Public Research Institutions Further strengthen research developments that are consistent throughout all levels, from the beginning to the application of results and transfer of the technology, and research developments aiming to obtain important intellectual property advantageous to the nation.

Using the Overall Evaluation Index of the Intellectual Property
The index of the intellectual property is being evaluated. The "Overall Evaluation Index" is being utilized at the time when deciding the distribution of the research resources. The following factors are being evaluated: the number of patent applications, licensing cases and income, the degree in which the patent and research papers are being referenced, the number of joint researches and enterprises started, and the number of consultations. Clarify Researchers' Obligation to Contribute to the Society and Value Intellectual Property in the Evaluation of Achievement In universities and public research institutions, it is made clear that contributing to the society is one of the responsibilities of the researchers. When evaluating the achievement of the researchers of specific fields, not only the researchers' research papers, but also the amount of the intellectual property created is being examined with equal importance.
Additional Applying and Evaluating Requirements for Raising Funds for Researches At the time of applying for the subsidy for scientific research or raising funds for research, the applicant must provide details regarding his intellectual property. It will serve as a reference when evaluating the selection of the research theme used by the applicant. Also, the applicant is required to report the condition of his intellectual property, after reporting the result of the research. Clarify the Rules of Making A Portion of the Amount of Money Earned from Inventions Go Back to the Individual Inventors
This is to clarify the rules of paying back the individual inventors an amount of money, when universities and public research institutions have received the rights of such inventions and earned profit from it. The Condition of Managing the Intellectual Property Being Reflected in the Distribution of the Research Resources
A part of research resources is being given as an effort to promote the creation of intellectual properties. Part of the research resources is used in setting up a plan reflecting the condition of the management of intellectual property. Set up Intellectual Property Head Offices in Universities Strengthen the functions of intellectual property head offices in universities in order to respond to the various inventions developed in universities.
Support is being carried out in realizing various types of intellectual property managing systems corresponding to the circumstances at each university. Encouraging Participation of Students in the Activities Concerning University's Intellectual Property Besides the parties concerned in businesses and universities, students are also encouraged in participating the university's intellectual property activities.
The principle of Institutions unifying the management systems In order to be able to plan for an efficient use of patents at universities and public research institutions, a system is being set up with the principle of having the management systems unified at universities and other institutions. Setting up the rule that makes it possible for the rights of the inventions at universities, not applying for patents, to go back to the researchers. Encouraging Venture Businesses Originated from Universities In order to plan and promote the start of businesses from university inventions, other than having a unified managing system that institutions and universities use, a flexible rule is also incorporated. It not only corresponds to the possible conflict in interests, but also makes it possible for the researchers having the desire in starting businesses to flexibly set the transfer and the execute rights of the patents.
Based on this kind of policy, different ministries and government offices can go ahead with the actual businesses relating to intellectual property. For example, the Ministry of Education and Science progress ahead with the "business in planning the head office of university intellectual property". This business supports the planning of the head office of the university's intellectual property, after the intellectual property has been transferred back to the institutions. It enforces the creation, acquisition, management, and the application of the university's intellectual property in the most favorable way. Currently, there are more than thirty universities being selected that are working on setting up university's intellectual property head offices.
Moreover, the Japanese Patent Office started a "business to support the construction of the organization in managing the university's intellectual property". This includes sending an intellectual property managing advisor to the university, to serve as a help in constructing the university's intellectual property managing section. The university staffs can enjoy the actual managing of the intellectual property, and at the same time progress ahead with the preparation of the system.
The previous paragraphs have described the changes occurring concerning intellectual property in universities. This has just begun, and may seem to be moving ahead comparatively fast. However, making efforts like these to timely respond to the needs of the researchers and realizing the reconstruction of Japan, letting intellectual property be the major power of the country is being expected.