Intellectual Property Right (IPR)

Transcription

1 Entrepreneurship Day6 Intellectual Property Right Jiro Kokuryo Keio University All rights reserved Intellectual Property Right (IPR) Today, we talk about intellectual property right. Looking from venture companies perspective, IPR has such advantages as: 1.protecting your ideas from copycats, thereby making investors will feel safe that you are the one to talk to, if the technology/idea is good. 2. giving you the basis for making contracts with partners that usually ask you to offer something in return for whatever you want from them. 2

2 We are happy to welcome: Guests 1. Mr. Takeo TAKIUCHI Director for IP Exploitation Policy Planning Coordination, Japan Patent Office 2. Mr. Kenichi Hatori Director of Intellectual Property Center Keio University 3 How to protect and use your IP? - Japanese Patent System - Takeo TAKIUCHI Director for IP Exploitation Policy Planning General Affairs Department Japan Patent Office

3 What is Intellectual Property? Features of IP (Intellectual Property) -Inventions, Creations, Ideas, etc. (produced by someone s effort) -Intangible Assets (not clearly recognized but owned by someone) -Massively Productive (not a single product) -Profitable If Popular (sold massively on the market) However, -Easily Stolen (imitated without tech. problems & feeling guilty) -Massively Productive even by imitators Let s think of the importance of IP protection with an example of mobile phone. Innovation Related to Mobile Phone Improved Storage Structure of Aerial JPO, Friendly and Attractive Name to Users Utility Model of Aerial Beautiful Bright Display 06/27 THU 11:29 Brand Name JPO Know-how on Assembly Method of Assembling Invention of Liquid Crystal Media Contents Call signals with Melody, Games Design of Body Shape Beautifully Slim Body A lot of new ideas are offered!

4 Q: What if there were no ways to protect your ideas? R&D and Investment Situation You and your colleagues invested huge amount of money and spent years to develop and market a brilliant mobile phone with a good brand name JPO, This model became very popular and the copies were massively sold, but your ideas could be stolen by your competitors! copied products could be sold without your permission! A: Not creators but imitators would gain profit. Imitation Massively copied and sold by someone else + Genuine Product ¾An Imitator would gain profit with imitated products. ¾Your brand image might be damaged by low quality of copied products. All pains, little gain! Imitating would be easier and more profitable!

5 In conclusion, we need IPR (Intellectual (Intellectual Property Property Rights) Rights) system! Utility Model Rights Storage Structure of Aerial Liquid Crystal Display Patent Rights Protect Devices (Petty Inventions) (shape, structure or combination of articles) for 10 years from the filing date of application Protect Inventions 06/27 THU 11:29 Trademark Rights Brand Name JPO Protect Marks on Goods or Services for 20 years from the filing date of application Media Contents Copyrights (letters, signs, figures, etc.) Protect Original Intellectual Work for 10 years from the date of registration (Renewable) until the end of the 50th year after the death of the author Beautifully Slim Body Industrial Design Rights Know-how on Assembly Protect Illegal Acts (unauthorized use, etc.) Protect Designs (shape, pattern or color of articles) Until it is known to the public for 15 years from the date of registration Trade Secrets IPR Related Laws in Japan ¾Industrial Property Law - Patent Law (Inventions) - Utility Model Law (Devices) - Design Law (Designs) Jurisdiction of JPO - Trademark Law (Trademarks, Service Marks) ¾Copyright Law (Copyrights) ¾Unfair Competition Prevention Law (Well-known Marks, Indication of Origin, Trade Secrets) ¾Law concerning the Circuit Layout of Semiconductor Integrated Circuits ¾Seed and Seedling Law (New Plant Varieties)

6 What is Industrial Property Right System? IP Protection Aims of Industrial Property Right System -Preventing Imitation (to protect individual assets) -Encouraging R&D (giving motivation to creators) -Securing Credibility in Commercial Transactions (assuring authentication of products) IP Exploitation (Dissemination of IP Information, etc) -Encouraging Further Technological Development by Third Party (for application, improvement, etc.) -Promotion of Marketing Invented Products (by technology transfer, licensing, etc. ) Contribution to Industrial Development Spirits of Industrial Property Right System "The patent system added the fuel of interest to the fire of genius. (Abraham Lincoln, the 16 th President of the U.S.) Industrial Development It is not only for individual but public interest! Protection Encouraging R&D Securing Credibility Monopoly Right (compensation for publication) Third Party s R&D (Application, Improvement) Marketing Publication of New Tech. Exploitation Cassette Tape Floppy Disk CD-ROM DVD

7 JPO Organization Japan Patent Office Total staff: 2,901 General Affairs Dept. Trademark, Design and Administrative Affairs Dept. 1st Patent Examination Dept. (Applied Physics and others) 2nd Patent Examination Dept. (Mechanical Eng.) 3rd Patent Examination Dept. (Chemistry and Biotechnology) 4th Patent Examination Dept. (Electronic and Information Eng. ) Appeals Dept. (Number in 2008) Number of General Clerical Staff: 633 Number of Trademark Examiners: 150 Number of Design Examiners: 52 Number of Patent Examiners: 1,680 Number of Appeal Examiners: 386 National Center for Industrial Property Information and Training (INPIT) Outline of Japanese Patent System First-to-File system System of Laying Open of applications Request for Examination system; request within 3 years from the filing date (Applications filed before October 1, 2001; within 7 years from the filing date) Term of Patent Right; 20 years from the filing date Trial for Invalidation System

8 Procedure for Acquiring Patent Rights (Examination Flowchart) After 18 months from the filing date Application Formality examination Period for requesting examination Within 3 years Publication of unexamined applications Request for examination No request for examination Decision to grant Registration of establishment Publication of gazettes Request for Trial for invention Substantive examination Written argument Written amendment Notification of reasons for refusal Decision of refusal Withdrawal deemed Request for appeal against examiner s decision of refusal Appeal/Trial Examination Flowchart Examination Flowchart Decision to grant Registration of establishment Publication of gazettes Request for Trial for invention Request for appeal against examiner s decision of refusal Amendment Reconsideration by examiner before appeal Appeal/Trial examination Appeal/Trial examination Appeal decision to maintain Appeal decision to revoke Appeal decision for registration Appeal decision of refusal Intellectual Property High Court The Supreme Court

9 Patentable Invention under JPL (Japan Patent Law) 1. Does the invention fall under an invention subscribed by the JPL? 2. Is the invention industrially applicable? Main paragraph of Section Is the invention new? Novelty: Section 29(1) 4. Is the invention sufficiently difficult to make? Inventive step (Nonobviousness): Section 29(2) 5. Has the application for that invention been filed for the first time? First-to-file-system: Section 29bis and Is the specification of the patent application described as provided? Description requirement of specifications: Section 36 and Is the invention free of antisocial factors? Section 32 YES The invention is patentable. NO NO NO NO NO NO NO The invention is unpatentable. Transition in the Number of Patent Applications Number of patent applications(2007): 396,291

10 Status of Examination in JPO Performance Number of Decisions to Grant a Patent [A] 111, , , , ,383 Number of Decisions of Refusal [B] 106, , , , ,678 Number of Withdrawals/Abandonment After the First Action 1 [C] 3,050 3,930 6,266 7,915 5,567 Number of final decisions [D; A+B+C] 220, , , , ,628 Rate of Decisions to Grant a Patent [A/D] 50.5% 49.5% 49.1% 48.5% 48.9% Rate of Decisions of Refusal [(B+C)/D] 49.5% 50.5% 50.9% 51.5% 51.1% 1 The First Action is the first notice of the examination results given by the examiner. Global Trends in IP - Patent Filings Worldwide - Rapid increase in number of Patent Applications throughout the world (million) Patent applications filed by non-residents Patent applications filed by residents Worldwide Patent Filings by Year of Filing Non - approx.40% Non-resident approx.40% Source: WIPO Patent Report (2007 Edition)

11 Cooperation in Examination Structuring the Advanced Industrial Property Network (AIPN) Patent Applications filed first with JPO and subsequently with intellectual property offices (IP offices) in other countries JPO Information including the legal status, granted claims, cited documents, and the patent family of a patent application filed with JPO File wrapper information IP offices, mainly in Asia available in the following 31 countries, area and organization (as of April 2008); Australia, Austria, Brazil, Canada, China, Chinese-Taipei, Denmark, Finland, France, German, Greece, Hungary, India, Indonesia, Malaysia, Mexico, Netherlands, Norway, Philippine, Poland, Republic of Korea, Russia, Spain, Sweden, Switzerland, Thailand, United Kingdom, United States, Vietnam, and the European Patent Office (EPO) Patent Examination Result Utilization Scheme (PRUS) JPO Patent Examination Result IPOS (Singapore) MyIPO (Malaysia) DIP (Thailand) Modified Substantive Examination Accelerated Examination <JPO website> JPO website (in English) ttp://

12 2008 Policy management How to protect and use your IP University & IP-strategy Kenichi Hatori Director, Intellectual Property Center Keio University hatori 23 Successful Case of University Researches 1. Legendary success Technology Field Year Income from the License University Gene recombination Bio 1973 More than 250 million USD Google IT 1996 More than 300 million USD Stanford University Stanford University 2. Examples of technology transfers from Keio University Nano liquid droplet measurement (Faculty of Science and Technology) Lecture Supporting System, Metabolome Analysis System (Faculty of Environment and Information Studies) Cure for disorder of memory (School of Medicine) 3. Recent outstanding research outcome from Japanese University ipscell (New versatile cell) creation technology (Kyoto University) 24

13 However, many research results fall into Creative ideas/concepts Champion data only Verification is not enough Immature, not brushed up No consideration on accuracy, efficiency, and cost Unclear field of research application Difficult to retrieve information University Research outcome Therefore Development risk is high, No development partner gained No fund for continuing the research Result Neglected research outcome 25 Tool for developing the researches That s Patent!! Brushed up, and become more attractive! Through the patent application process, the characteristics, effectiveness, and application of each research will be more clear, thus making the research more easy to understand as well as attractive Securing the originality Through patent application, the originality of your business will be secured, clarify what kind of secret has to be protected, and the communication among the companies and researchers will be accelerated. Incentive for the developer!! Through the patent acquisition, you can eliminate the followers and give incentive to the developers. Increase the mind for investment and development You can strategically expand your business utilizing the patent, and the development and investment mind will be encouraged. 26

14 Intellectual Property Nation, Japan Expectations to universities 1867 Yukichi Fukuzawa introduced the European patent system to Japan in a book called Seiyo jijo 1885 Patent Monopoly Act Late 1980 Inflation bubble Depression after the bubble explosion (lost decade) 1998 University Technology Transfer Acceleration Law (TLO institution) 1999 Industry reproduction special measures law (Japanese Bayh Dole Act) (Bayh Dole Act was enacted in 1980 in the USA: Contributed greatly to the university company cooperation) 2000 Industry technology encouragement act (University faculty members can have side business like entrepreneur business or TLO executive members) 2002 Prime Minister Koizumi made a policy statement to put importance on Intellectual Property General strategic framework for the intellectual property, Intellectual property act Patent office started to dispatch IP management advisor to universities 2003 University IP maintenance operation (by MEXT: ) Encourage the inventions to be kept in the university who created the invention 2008 Started the strategic promotion for industry academic government cooperation (MEXT: ) 27 University s 3 missions 28

15 Contributing to the society utilizing the research result Commercialization is required to return the research result to the society Companies (industry) and universities (academy) collaboration is required Universities Companies Research result Needs Product Society Industry academy collaboration 29 Industry and universities have same expectations about Industry academia collaboration Industry Globalization means selection and concentration! Company s resources concentrate on the core competence for the moment Researches that could be future core technology should be carefully monitored and if possible create collaborative situation Utilize the university s resource efficiently Same Expectations University The 3rd mission of university To return the research result to the society Does not manufacture products by their own Collaborate with companies to develop the research result into product 30

16 Industry academia collaboration with no technology transfer organization Patent office Researcher directly deals with companies. University Research result Patent application under company name Company Lab. Research fund with no contract 31 Need for technology transfer Without technology transfer Researcher directly deal with companies Unclear process (no contract) Return for the inventor is small even if it is a great invention Research result is controlled by companies Counter process Deal with organization and companies that universities approve Clear process: Deal with contract Return fee based on the profit result Technology transfer to the companies who can create profits COI, Conflict of Interest, could easily happen Patent holder is the university. Organization for technology transfer, 32 and process on contract base.

17 Bayh Dole Act as the basis of industry academy collaboration Enacted in the U.S. in 1980 (Before Bayh Dole) : The patent of Government funded research developments belongs to the government > Commercialization is difficult (After Bayh Dole): The patent as the research result belongs to the university University researches funded by government Patent holder university act for the research result introduction to the society Enacted in Japan in 1999(20 years later than the U.S.) (After Bayh Dole): Patents funded by competitive government fund belong to universities 33 Technology transfer organization in Japanese universities Internal TLO and outside TLO Internal TLO Number of org. in JP 16 Characteristic TLO activities and hiring is limited by university rule. There are no special positions for specialists in Japan. Limitations in dealing the stock options for national universities Outside TLO Held by Univ. Wide area 9 23 Activities can be separated from the university and own hiring and salary rules can be applied Possibilities for creating duplicated organizations with the university Needs to receive good seeds from the universities 34

18 Technology Transfer at Keio Univ. (Internal TLO) Invention proposal to licensing activities Invention proposal Interview Decide to apply or not to apply Interview with Patent attorney Patent Application Licensing activities Application Maintenance Management Same technology transfer specialist will support the whole process for same researcher 1. File patent application considering the future licensing process 2. Directly reflect the interview result to the licensing process 3. The result of licensing process is reflected to the maintenance and management of the application 4. Feedback from the licensing process will be returned to the researchers 35 Incentives to the researchers at Keio University 1. High royalty delivery to the inventors in all cases (subtraction) Management Fee 15% Half to the inventor Half to the university Payment will continue even after the researcher is no longer with the university 2. Received Intellectual Property Center Award (2000, contributed greatly in technology transfer) 2007 Fast processing technology for electronic microscope testing sample by Prof.Shimizu (Faculty of economics chemistry classroom) and Mitani san (Faculty of Engineering) 2006 Abnormal glyco metabolism diagnosis medicine by Prof.Hiroshi Hirose (Health Management Center) 2005 Lecture support system by Prof.Hiroaki Chiyokura (Faculty of environmental information) 2004 Medicine for Systemic scleroderma diagnosis medicine by Associate Prof. Masataka Kuwana (Faculty of Medicine) 36

19 Number of applications past record at Keio University Number PCT Patent Foreign Patent Domestic Patent Patent Application Fiscal Year Number (Joint patent application is less than half domestically, more than half in abroad) Businesses based on the IP Number Fiscal Year New License Contract Fiscal Year 1,000yen 90,000 80,000 70,000 60,000 50,000 40,000 30,000 16,628 20,000 11,189 10,000 2,731 0 Income from the License 42,012 63,949 59,538 80,472 70, , Fiscal Year 37 Entrepreneurship can make the best of fundamental researches in university Companies hesitate to utilize the research result as it is, since there are no accumulated data, or not enough marketing This is where the entrepreneurship comes in Put business up to where the companies want to buy, and conduct M&A at that point Entrepreneur him/herself can expand the business M&A by a company and expand the business Overcome the death valley with entrepreneurship Entrepreneurs expand the business Research result 38

20 Entrepreneurs utilizing the intellectual property by Keio University biotechnology companies (out of 16) The age of open innovation by Henry Chesbrough Closed innovation Self management of the fundamental research, development, and manufacturing. Utilize the internal resources Idea and work within the company Employee s mobility is low No expectation for the entrepreneurship University is not important Self business defense, block the other business, cross licensing Stick to company owned technology. NIH Not Invented Here) Syndrome. Open innovation Maximize the utilization of the resource outside of a company. Collaborate with internal organizations Collaborate with ideas and works outside of the company Employee s mobility is high Much expectation for the entrepreneurship University is important Joint research, licensing, hand over Maximum profit, save time and money Distribute the risks of starting new businesses Participate in new field and new market40

21 Active joint research and licensing in open innovation environment Research Research Research Research University Development Development Development Manufacture Manufacture Manufacture Sales Sales Sales Closed innovation Open innovation 41 Intellectual property plays an important rule to effectively utilize the university s research result Under open innovation Joint research Intellectual property to call in joint researches Intellectual property as the result of joint reseach Licensing contract Intellectual property is the licensing property In entrepreneurship Effectively deploy the business if there are Intellectual property Monopolize the market, Cross licensing, negotiation tool 42

22 Acquiring patent is expensive! Detailed inspection, and maintenance afterwards.. Apply (year) Domestic preferential enhancement period unpublished PCT Domestic transfer extension period PCT Foreign application Period before request for examination Patent registration Maintenance and readjustment Check1 (Application time) Check2 (Applying to foreign countries) Check3 (PCT domestic transfer time) Check4 (Review request, reasoning the rejection, judgment request) Check5 (when receiving the pension) 43 END Thank you very much! 44

23 Information Updates on Nov 5 For Business Plan Contest at SOI Asia 2008 Information Updates: Incubating support to your business plan When you are writing business plan, which is preferable one linking with research outcome at your university, and you might face some challenges: how to calculate market size?, how to valuate my business seed?. We contest organizer-soi Asia Business Platform LLP- is preparing incubating support. This is for professional incubator, e.g. consultant, university faculties at management course, to advise your business plan. If you need this support, please send your inquiry and your tentative business plan from Nov5 to Nov19 by . When you protect your business plan document file with PIN No, please change that pin no to soiasiapartner for incubator s convenience. address is entre@asia.soi.wide.ad.jp Title of this inquiry mail is inquiry to incubator by your name Business Plan Contest at SOI Asia 2008 Website here! 45