Building International University-Business links Programme
Session 2－ Options for collaboration
University IP policy －Various Approaches－ 2012.1.10 Professor Koichi Hishida General Director, Headquarters for Research Coordination & Administration, Keio University
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Yukichi Fukuzawa, the First Japanese Who Introduced the Idea of Patent System to Japan In 1858 Yukichi Fukuzawa founded a private school called Rangakujuku (predecessor of Keio University). In 1867 Fukuzawa introduced the idea of European patent system to Japan for the first time. In 1885 Establishment of Japan Patent Office
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Keio’s System for Industry-University Collaboration & Technology Transfer Keio University 6-Campues,+ 2 R-Parks Faculties and Researchers Science and Technology
School of Medicine
Pharmacy
Environment and Information
Policy Management
・・・
Research Fund
Govern ment
Office of Research Administration (on each campus)
Joint/ Commissioned research
Support
Industry Headquarters for Research Coordination & Administration Research Promotion
Intellectual Property
Planning and strategy
Technology transfer
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History of Intellectual Property Office at Keio University 2008
2003
1998
2012
1998 IP Office established 1998 Law of TLO（Keio approved as TLO by Government in 1999） 1999 Bayh-Dole Act in Japan enacted 2002 IP Basic Act enacted 2003～MEXT ‘s support started April, 2011 New research support system started in Keio 180 PCT
160
oversea
140
domestic
120 100 80 60 40 20 0 98
99
00
01
02
03
04
05
06
07
08
09
10
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Types of Research Funds ＆ Technical Fields Seen in Keio’s IP 研究資金と出願分野 Patent Application in 2008fy 170 Patents/Y (Domestic)
34
29
％
Bio/Medical
Research funds from external entities 20.1billion¥ in 2010fy
Information/ Communication
16 Measurement /Control
Material /Chemistry
Environmen t/Informatio n etc 11%
Humanities 6%
Others 13%
21
（201億円）
Science/ Technology 23%
Medical Science 47%
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Research-related Data in 2009/2010: Research Funds from External Entities and IP/Licensing 2009fy
2010fy
Research funds from External entities(外部研究資金)
18.19 Billion¥
20.09 Billion¥
Commissioned research
5.88 Billion¥
5.88 Billion¥
Joint research
1.6 Billion¥
1.9 Billion¥
Patent applications (Domestic filing) (日本出願)
156
137
Patent applications (PCT filing※) (PCT国際出願)
52
48
License revenue
45 Million¥
50Million¥
(受託研究) (共同研究)
(ライセンス収入)
(≒182 Million €) (≒59 Million €) (≒16 Million €)
(≒0.45Million €)
※PCT filing: Patent Cooperation Treatyによる国際特許出願
(≒201 Million €) (≒59 Million €) (≒19 Million €)
(≒0.5Million €)
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Major Responsibilities of Keio’s IP Office in Keio (知的資産部門の業務）
IP prosecution and development Technology transfer from Keio to industry To Provide support for making agreements of joint / commissioned research and material transfer To Provide support to Keio born start-ups that utilize Keio’s IP Dissemination & raising motivation of IP creation Education and training To Hold symposium and seminars 7
Workflow: From Invention Disclosure to Licensing and Patent Maintenance (発明提案から技術移転まで) 2) 1)
Invention disclosure
4)
Inter view
Deciding whether or not to file a patent application
Interview with a patent attorney
Patent application
Licensing activity
Patent maintenance
3)
One to one correspondence between a licensing expert & a researcher from invention disclosure to licensing activity. 1) Enrich patent application in view of future licensing activities 2) Directly reflect results of the interview on licensing activities 3) Reflect results of licensing activities on patent maintenance 4) Give feedback on results of licensing activities to a researcher One technical expert handles the whole matter: from the beginning (disclosure) to the end (licensing and patent maintenance).
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Incentives for Inventors （研究者へのインセンティブ） 1) Inventors receive large amounts of royalties.
15% Over head
Half of the rest for the inventor 半分は研究者
The other half for the university 半分は大学
*Royalties are paid even after concerned researchers leave the university. （他大学移籍後もロイヤルティ還元します） 2) Keio Intellectual Property Award Each year, Keio commends a researcher whose invention or creation owned by Keio is utilized in society in the most remarkable way.
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Examples of Technology Transfer at Keio University（IP活用事例） Inventor
Patent Reg. No.
Name of Invention
Prof. Maeda et al. (Faculty of Science and Engineering)
Patent No.3211825 Patent No.3339024 US Patent No.6,578,208
Method for the measurement of minute droplet
Prof. Nakajima et al. (Faculty of Science and Engineering)
Patent No.3438009 Patent No.4107659
Generative system of handwriting fonts
Mashita (student) et al. (Faculty of Science and Engineering)
Patent No.3346560
Method for preparation/delivery of contents and server computer
Prof. Soga (Faculty of Environment and Information Studies)
Patent No.3341765
Method for the separation and analysis of anionic compound (Metabolome Analysis Equipment)
Associate Prof. Kuwana (School of Medicine)
Patent No.3455782
Diagnostic reagent for scleroderma
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Example1 Method for the Measurement of Minute Droplet (Patent: Pat3211825,US6,578,208,B2) （微小液滴の計測方法） Inventor: Prof. Maeda et al. Particle images are separated and their diameter and location can be measured by compressing picture images in vertical direction using a special optical system in a high concentration condition of fine particles.
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Example 2 Generative System of Handwriting Fonts Pat No. 3438009, Pat No.4107659 （手書き文字出力ソフト） (Inventor: Prof. Nakajima et al.)
Turn your handwriting into a font! Orange 2 allows you to turn your handwriting into a font in a very simple way, giving you the creative freedom of customizing your font collection for letter, mailing label, name card, web page, diary, or essay.
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Example 4 Metabolome Analysis Equipment Pat No. 3341765 Inventor: Prof. Soga
メタボローム解析装置
CE-MS Equipment Fused Silica Capillary
<Problem> Power disruption within a few minutes
Electroosmotic flow
Electroosmotic flow
S<olution> Reversal of electroosmotic flow by SMILE (+) Capillary
Electroosmotic flow reversed
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Challenges: How Can University IP Offices Survive? Main expenses of IP offices are patent filing costs and personnel expenses for TT experts. Expenses are much larger than license income at TT offices. 90 80 70
License Revenue (Million¥)
60 50 40 30 20 10 0 01
02
03
year
04
05
06
07
08
09
10
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Basic Understandings
(基本認識)
¾
University’s new research results are expected to be used for benefit of society and to create innovations and activate economy.
¾
University’s research results are fundamental and sometimes high risks exist for commercialization (there is a death valley).
¾
So it takes around or more than ten years to get royalty income by commercialization. This is learned from cases in the US and our experience.
¾
Patent application filing costs are very high and accumulated large number of patent application which may be used in the future becomes a huge financial burden to the university’s TT office. 15
Various Approaches for Use of University IP ¾
Typical ways of technology transfer from university are 1st) Industry-University joint/commissioned research 2nd) Licensing 3rd) Start-ups.
¾
Patent application or patent right will be often necessary for not only licensing but also start-ups or inviting industries to joint/commissioned research.
¾
University’s research result is expected as a seed of innovation. This seed should be transferred to industries as promptly as possible for further development. If there is no collaborator, IP of this research will be abandoned. Start-ups
collaboration
University Basic research result
Industry
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Direction of IP Management at University 1. Accelerate research by using IP to increase the commercialization potential in addition to traditional licensing. Exit① To acquire and develop research (IPを共同研究や受託研究の呼び水とする)
Exit② To create start-ups (IPに基づいてベンチャーを起こす)
Exit③To license IP (IPをライセンスする)
2. Select necessary IP for these purposes and reaction from industries through TT activity 3. Evaluate the value up and contribution of IP at the visiting evaluation committee. Results shall be reported to the university executives. 17
Acceleration and Value Up of Research by IP: Three Exits for the Benefit of Society Joint/Commissioned research
Exit 1
Research Fund
Resea rcher
disclo sure
Licensing IP
Stimulat ion
Royalty Reaction
startups entrepreneur Government
JSPS
JST
Existing industry
・・・ NEDO
M&A
Exit 2
Products
society
Exit 3 Products
Evaluation Committee of IP contribution
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