WIPO REGIONAL SEMINAR ON TECHNOLOGY TRANSFER BY UNIVERSITY AND PUBLIC RESEARCH INSTITUTIONS THOROUGH THE STRATEGIC USE OF THE PATENT SYSTEM December 9-11, 29 Opportunities and Challenges for Open Innovation Hitoshi AMANO Director for IP Exploitation Policy Planning Coordination General Affairs Department (JPO) Topics Opportunities and Challenges for Open Innovation Closed innovation model & Open innovation model The role of universities and research institutions and current status under open innovation era New challenge: IP strategic producer 2
Closed Innovation Model Research Development Commercialization One company = Only internal ideas Compa any Research output Product Bus siness domain The company can dominate its own IP and prevent competitors from breaking into the market. 3 Development of Open Innovation < Changes in the environment surrounding innovation > Increased sophistication / complication of technologies and shorter product lifecycles Development of IT and worldwide knowledge sharing < Development of open innovation > Smooth flow of knowledge/technologies between outside players is a very important factor. A company should choose an optimal R&D system utilizing the advantages of both closed/open-innovation depending on the market or the type of technology. Overseas companies have been globally carrying out their business activities effectively utilizing advantages of both types of innovation. 4
Challenges in each entity Big companies Select & concentrate on particular technology Give priority to short- term solution Leave long-term research SMEs Have much skill Have manufacturing resource Lack of fknowledge Solutions by Open Innovation Model R&D R&D Ventures Have knowledge in particular field Lack of resource in other fields Lack of skill Univ. & PRIs Carry out basic & long- term research No manufacturer Not much research fund Open Innovation Model Research Other company Development Commercialization Other company Compa any Research output Product IP is expected to function as an infrastructure facilitating the distribution of knowledge and technology. University / Research Institution = Non-manufacturers IP serves as a kind of currency Bus siness domain 6
Type of Open Innovation - Typical example depending on objectives & exit strategy 1. R&D cost reduction: The model aiming at reduction of investment on R&D in a company by introducing external technology besides internal technology. 2. Standardization: The model aiming at formation of standard technology by pooling a patent of each company, particularly in the technology in which a standard is formed of a set of two or more technology. 3. Needs initiative: The model aiming at collecting and bundling inside & outside technology which can solve the subject set up at the company. Current status of R&D in Japanese Universities 18% of total R&D expenditures in Japan are by universities in Japan. 36% of researchers in Japan work for universities in Japan. R&D Expenditures Universities 18% (3.4 trillion yen) Number of Researchers Universities 36% (3 thousand) Total R&D Expenditures in Japan: 18.9 Trillion Yen Total Researchers in Japan: 83 thousand Source: Ministry of Internal Affairs and Communications (MIC, 28) The mission of Japanese universities is the promotion of education, academic pursuits, and contribution to society. In the field of the intellectual property, universities having rich research funding and human resources are expected to promote industry-academia-government R&D, return the fruits of research to society, and turn out competent researchers. 8
Promotion of University Research Cycle through Technology Transfer Technology Transfer to Industry Universities/TLOs Management of Patents Revenue of Universities/TLOs Industries Industrial Applications & Production & Marketing Licensing Fees Rights to Obtain Patents Acquired by Universities/TLOs iti Researchers Outcomes of Research (Inventions) Promotion of University it Research Activities Funds for Research to Create New Inventions 9 Issues on IP Management in University IP created in universities had been considered the private property of the researchers. As there was no systematic ti and strategic t means to exploit research results, IP tended to become dead stock. Research accomplishments failed to be introduced to society. 1. Change of the Principle of Patent Ownership Private Researcher University Organization (Systematic and strategic IP management) 2. Promoting Partnership between Universities and Industry Goal: Promoting Creation and Exploitation of Intellectual Property from Universities by using Intellectual Property Cycle 1
Promotion of Attribution to Organization Policy of attribution to organization in principle Following the institutionalization of national universities since 24, the intellectual property in the universities has been attributed to the organization in principle. Merits of attribution to organization -Systematically organized correspondence for easy excavation / protection of inventions. -The problem of patent cost for the researcher due to the attribution to individuals and the burden for the license agreement has been solved. -By the unification / facilitation of license agreements, etc. with enterprises, etc., the recovery of an appropriate consideration for technology transfer and the return on investment to the universities, etc. and the researchers have been achieved. facilitating commercialization -With respect to the problem of the obscure handling of research performance (patent, etc.) due to the attribution to individuals, transparency has been secured by attribution to the organization. 11 Change of Innovation Circumstances 5% of Japanese companies have come to utilize the research results of a university or a public research institute more than before. Positive use of the external resource has been progressing. Independent operation (closed model) and positive IP strategy (open model) are utilized flexibly. Q: Have you come to utilize the research Typical reasons for choosing More utilization than before result of a university or a public research institute more than before through collaboration on the R&D process in your company? No change 45.7% Others 6.2% More utilization than before 48.1% <Government Policy on IP system> Establishment of IP headquarters and/or TLO in university Japanese Version of Bayh-Dole Act <Other factors> Change of management from independent operation to outside resource utilization Source: Nippon Keidanren IP committee Result of the survey for IP policy evaluation (March 18, 28) 12
Construction of System for Managing / Utilizing Intellectual Property in University of approved TLOs) (Number Act for Enhancing Industrial Technology (State-owned facilities used free-ofcharge by TLO) 5 4 3 2 1 4 1 16 25 31 39 41 42 43 36 1998 2 22 24 26 28 (Fiscal Year) Act Promoting Technology from Universities to Industry (Establishment of system for approved TLOs) 161 IP Departments of Universities 47 Approved TLOs 47 The role of TLO 1.To facilitate the effective use of patented research results 2.To function as a liaison between industry and academia 3.To secure transparency 4.To provide IP education and training to university researchers and staff 13 Comprehensive Support Measures for Universities From the invention creating stage to the technology licensing stage Creating stage Patenting stage Licensing stage - Basic knowledge - Technology information Holding seminars for universities researchers Providing textbook Providing patent information o IP Digital Library (IPDL) Patent Documents 71 millions Integrated search system for patent & research paper information (JSTPatM) Inventions by university researchers - Making adequate patent documents - Prosecution procedure & cost Dispatching p g IP advisers to universities Holding seminars & Distributing manuals for IP management Reduction & Exemption of examination & annual fee Fast track examination Patent Map / Trend Survey IP Research Promotion Project at Univ. Universities IP Management Sections At Universities TLOs IP Headquarters (internal external) - Distribution of IP rights - Matching of needs & seeds Access to patent licensing Database -Facilitation of universities patents distribution - Free entry of patent seeds Technology Transfer License Fee Dispatch of patent licensing advisers Support for matching universities technologies with companies needs Industries 14
Status of Collaborative Research between Universities and Industry Joint Research A university and a company share human and financial resources in a research project. Commissioned Research A university accepts a research project outsourced by a company, public-service organization, etc. Source: Ministry of Education, Culture, Sports, Science and Technology (MEXT) 18, 16, 14, 12, 1, 8, 6, 4 4, 2, 2, 18, 16, 14, 12, 1, 8, 6, 4, 2, 9,255 Number of Joint Projects 1,728 13,2 14,757 16,211 23 24 25 26 27 Number of Commissioned Projects 18,45 18,525 16,96 15,236 13,786 23 24 25 26 27 15 University-based Startups (Ventures) Transition in the Number of University-based Startups 2, 1,8 Total Core ventures share 1,679 1,773 1,6 1,498 Plan to establish 1, Universitybased Startups 1,267 1,294 1,382 1,4 1,2 1,128128 1,15 1, 925 785 8 722 597 6 535 435 382 4 22 295 27 83 1 118 152 17 2 37 38 45 53 7 15 28 33 41 52 62 77 21 21 25 (Fiscal Year) Core ventures: Venture businesses founded based on research performance generated in universities & Student s venture businesses related deeply to universities Source: Ministry of Economy, Trade and Industry (METI) 16
Patent Applications by Universities and TLOs in Japan The number of patent applications from universities rapidly increased until 25 and leveled off in 26. From 27 to 28, the number of patent applications has increased 44% (13/235) of Japanese universities and decreased 47% (111/235) of Japanese universities. Strategic intellectual property activities have been performed by each university. Increasing-decreasing tendency of patent applications from Number of patent applications from universities and TLOs universities and TLOs 9 8 7 6 5 4 3 2 1 2% 1979 25% 2775 25% 464 27% 7352 26% 7569 7859 24% 761 22 23 24 25 26 27 28 Number of applications Rate of global applications Rate of global applications: rate of applications filed in foreign Offices among all applications filed in JPO. 3% 25% 2% 15% 1% 5% % Num mber of organiz zations 14 12 1 8 6 4 2 19 Increased No change Decreased 228 241 1 115 14 13 235 19 22 21 Change in number of applications from 25 to 26 Change in number of applications from 26 to 27 Source: (JPO) 111 Change in number of applications from 27 to 28 17 Change in Patent License Income of Universities (Mi illion Yen) 9 8 7 6 5 4 3 2 1 Income from license fee (Nagoya University) Income from license fee (except Nagoya University) 23 24 25 26 27 (Fiscal Year) Income from patent t license. Change in number of universities iti with income from patent license Fiscal Number of Year Organizations 23 32 24 47 25 83 26 98 27 19 Source: Ministry of Education, Culture, Sports, Science and Technology (MEXT) 18
Licensing activities in Japan and U.S. (1) Japan U.S. IP offices / TLOs in universities Notices of invention Patent applications 24 157 9,438 19,827 7,61(28) 1,468 Patents t granted 886 (28) 3,258 License cases 5,538 25,19 Income from patent licensing 1.16 Japanese Yen US$ 2.8 billion (source) The numbers in Japan in 27 from the IP Headquarter The numbers in US from AUTM survey in27 19 Licensing activities in Japan and US (2) Breakdown of license income in Japan & US 1% 9% 8% 7% 6% 5% 4% 3% 2% 1% % 59.1%.2% 4.7% Others: temporary etc. Stock related income Running royalty 38.4% 2.7% 58.9% Japan US Source:UNITT (28) and AUTM (26) Licensing Survey (Million US$) 1,2 1, 8 6 4 2 The number of patent applications from Univ./TLO in Japan has already reached the same level of the US level. 198 Patent license income in US Univ. It took 1-15 years from 198 (introduction of Bayh- Dole Act) to the rapid increase of income. 1982 1984 1986 1988 Balance: Hockey stick curve 199 1992 1994 1996 1998 2 22 Source:AUTM Licensing Survey TLOs in Japan Established in 98 They should take IP strategy in consideration of commercialization more. Just 1 years passed! 2
Transition of Open Innovation New Challenge In-bound type Open Innovation Out-bound type Open Innovation Mutual complementary relation Outside cooperation synergy Company A Company B Company A Company B University C Research Institution D Joint research R&D consortium Source: Ministry of Economy, Trade and Industry (METI) 21 Support for new cooperation between Academy & Industry - Diversification of forms of research & development - Diversification of forms of research & development at universities and research institutions R&D consortium Participation of a number of industries/academies/research institutions Formulation of an appropriate IP strategy is necessary. 22
Dispatch of IP Producer The JPO has just started to dispatch IP-strategic experts for a certain intensive period to an R&D consortium (Government funding project) in which multiple universities, research institutions and companies participate. The aim of this program is to support the formulation of strategies regarding IP, such as patent applications and commercialization, in the R&D consortium in order to promote R&D. Support provided by the dispatched team (example) 1. Formulation of R&D strategy (Utilizing patent information such as Patent Map ) 2. Formulation of IP strategy t of R&D project (Constructing a strategic patent portfolio) 3. Formulation of strategy for utilization and commercialization (Marketing, Making contract or license agreement) Combination IP Producer (Expert team leader) Dispatch Project Leader Patent information expert Patent licensing expert IP-strategic expert team R&D consortium 23 Dispatch of IP Producer <Role of IP Producer in a R&D consortium> before starting early stage middle stage final stage Consultation for a funding agency Making R&G strategy from IP view points Formulating basic IP policy in terms & conditions Formulating IP policy and letting researches know in the consortium Supporting to make patent map Educating and researchers Evaluation of research results Consulting and Supporting to obtaining patents Making patent portfolio Advising R&D strategy Making final patent portfolio & attribution Making policy for foreground IP
Dispatch of IP Producer Requirements for IP Producer Knowledge Requirements IP & related laws & regulations Technology in the field Business or Market trends Management theory Skill Requirements Strategic planning Marketing research IP & Technology evaluation and management Leadership Communication Keys for Success of IP Producer Ability Motivation Power Budget Personal factors Organizational factors As of Dec. 29, producers are sent to two projects as a trial. Carrier of a producer: Mater degree of Engineering Worked for a private company as researcher, IP manager & executive Worked for a university as IP adviser 25 In summary In the movement toward Open Innovation : Smooth flow of knowledge / technologies is key IP plays more important role like currency Universities / Research institutions are expected to involve in open-innovation model more R&D forms are diversified: e.g. research consortium Clear objectives & exit strategy are needed Formulation of an appropriate IP strategy is necessary IP producer is a new key person Appropriate i t supports by the government are effective It takes time to have results from commercialization of university inventions 26
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