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.
Entrepreneurship ‐Day6‐
Intellectual Property Right
Jiro Kokuryo
2
© Keio University 2008-2010. All rights reserved
Guests
We are happy to welcome:
How to protect and use your IP?
1. Mr. Takeo TAKIUCHI Director for IP Exploitation Policy Planning Coordination, Japan Patent Office
- Japanese Patent System -
Takeo TAKIUCHI
2. Mr. Kenichi Hatori
Director of Intellectual Property Center
Keio University Director for IP Exploitation Policy Planning
General Affairs Department
Japan Patent Office
3
What is Intellectual Property?
Innovation Related to Mobile Phone
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)
Improved
Storage
Structure of
Aerial
Utility Model of
Aerial
Invention of
Liquid Crystal
Beautiful
Bright
Display
06/27
THU 11:29
-Profitable If Popular (sold massively on the market)
However,
-Easily Stolen (imitated without tech. problems & feeling guilty)
-Massively Productive even by imitators
“JPO”, Friendly
and Attractive
Name to Users
Brand Name
“JPO”
Know-how on
Assembly
Let’s think of the importance of IP protection
with an example of mobile phone.
Method of
Assembling
Media
Contents
Call signals
with Melody,
Games
Design of
Body Shape
Beautifully
Slim Body
A lot of new ideas are offered!
Q: What if there were no ways to protect your ideas?
A: Not creators but imitators would gain profit.
R&D
Imitation
Massively copied and
sold by someone else
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!
Genuine Product
¾An Imitator would gain profit with
imitated products.
¾Your brand image might be damaged
by low quality of copied products.
IPR Related Laws in Japan
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
06/27
THU 11:29
Trademark
Rights
Brand Name
“JPO”
Protect Marks on Goods or Services
Protect Inventions
for 20 years from the filing
date of application
Media
Contents
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
¾Industrial Property Law
- Patent Law (Inventions)
- Utility Model Law (Devices)
Jurisdiction
of JPO
- Design Law (Designs)
- Trademark Law (Trademarks, Service Marks)
Copyrights
(letters, signs, figures, etc.)
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
All pains, little gain!
Imitating would be
easier and more
profitable!
What is Industrial Property Right System?
Aims of Industrial Property Right System
IP Protection
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)
Spirits of Industrial Property Right System
"The patent system added the fuel of interest to the fire of
genius.“ (Abraham Lincoln, the 16th President of the U.S.)
-Preventing Imitation (to protect individual assets)
Industrial Development
-Encouraging R&D (giving motivation to creators)
It is not only
for individual
but public interest!
-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
Encouraging R&D
Protection
Securing Credibility
Third Party’s R&D
(Application, Improvement)
Exploitation
Marketing
Monopoly Right
(compensation for
publication)
Cassette Tape
Floppy Disk
Publication of
New Tech.
CD-ROM
DVD
JPO Organization
Outline of Japanese Patent System
Japan Patent Office （Total staff: 2,901）
(Number in 2008)
Number of General
Clerical Staff: 633
Number of Trademark
Examiners: 150
Number of Design
Examiners: 52
General
General Affairs
Affairs Dept.
Dept.
Trademark,
Trademark, Design
Design and
and
Administrative
Administrative Affairs
Affairs Dept.
Dept.
1st
1st Patent
Patent Examination
Examination Dept.
Dept.
(Applied
(Applied Physics
Physics and
and others)
others)
2nd
2nd Patent
Patent Examination
Examination Dept.
Dept.
(Mechanical
(Mechanical Eng.)
Eng.)
Number of Patent
Examiners: 1,680
3rd
3rd Patent
Patent Examination
Examination Dept.
Dept.
(Chemistry
(Chemistry and
and Biotechnology)
Biotechnology)
4th
4th Patent
Patent Examination
Examination Dept.
Dept.
(Electronic
(Electronic and
and Information
Information Eng.
Eng. ))
Number of Appeal
Examiners: 386
Appeals
Appeals Dept.
Dept.
¾ First-to-File system
¾ System of “Laying–Open” of applications
¾ “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)
¾ Term of Patent Right; 20 years from the
filing date
¾ “Trial for Invalidation” System
National
National Center
Center for
for Industrial
Industrial Property
Property
Information
Information and
and Training
Training (INPIT)
(INPIT)
Appeal/Trial Examination Flowchart
Procedure for Acquiring Patent Rights (Examination Flowchart)
Decision to grant
Period for requesting examination
Application
Examination
Flowchart
Within 3 years
After 18 months from the filing date
Formality examination
Publication of unexamined
applications
Request for examination
Request for appeal against
examiner’s decision of refusal
Registration of establishment
Publication of gazettes
Amendment
Request for Trial for invention
Reconsideration by
examiner before appeal
No request for
examination
Withdrawal deemed
Substantive
examination
Appeal/Trial examination
Appeal/Trial examination
Notification of
reasons for refusal
Decision to grant
Registration of establishment
Publication of gazettes
Request for Trial for invention
Appeal decision
to maintain
Written argument
Written amendment
Appeal decision
to revoke
The Supreme Court
Request for appeal against
examiner’s decision of refusal
Patentable Invention under JPL (Japan Patent Law)
3. Is the invention new? Novelty: Section 29(1)
NO
NO
NO
4. Is the invention sufficiently difficult to make?
Inventive step (Nonobviousness): Section 29(2)
NO
5. Has the application for that invention been filed for the first time?
First-to-file-system: Section 29bis and 39
NO
6. Is the specification of the patent application described as provided?
Description requirement of specifications: Section 36 and 37
7. Is the invention free of antisocial factors? Section 32
YES
The invention is patentable.
NO
NO
The invention is unpatentable.
2. Is the invention industrially applicable?
Main paragraph of Section 29
Appeal decision
of refusal
Intellectual Property High Court
Decision of refusal
1. Does the invention fall under an invention subscribed by the JPL?
Appeal decision
for registration
Transition in the Number of Patent Applications
N u m b e r o f d o m e s tic a p p lic a tio n s
N u m b e r o f fo re ig n a p p lic a tio n s
R a te o f fo re ig n a p p lic a tio n s
5 0 0 ,0 0 0
Number of patent applications(2007): 396,291
4 5 0 ,0 0 0
4 0 0 ,0 0 0
3 5 0 ,0 0 0
3 0 0 ,0 0 0
2 5 0 ,0 0 0
1 1 .3 %
1 1 .9 %
1 2 .3 %
1 2 .2 %
1 3 .8 %
1 1 .2 %
1 2 .9 %
1 0 .6 %
1998
1999
2000
2001
2002
2003
2004
2005
2 0 0 ,0 0 0
1 5 0 ,0 0 0
1 5 .1 %
1 5 .8 %
2006
2007
1 0 0 ,0 0 0
5 0 ,0 0 0
0
Status of Examination in JPO
Global Trends in IP - Patent Filings Worldwide Rapid increase in number of Patent Applications throughout the world
Performance
2003
2004
2005
2006
2007
Number of Decisions to Grant a Patent [A]
111,276
112,221
111,179
129,071
146,383
Number of Decisions of Refusal [B]
106,024
110,630
109,149
129,400
147,678
(million)
1.8
Patent applications filed by non-residents
1.6
Number of Withdrawals/Abandonment After
the First Action1 [C]
Patent applications filed by residents
Worldwide Patent
1.4
Non-resident
approx.40%
Filings by Year of Filing
(million)
1.8
3,050
3,930
6,266
7,915
5,567
1.2
220,350
226,781
226,594
266,386
299,628
1.0
Patent applications filed by non
1.6
- residents
Patent applications filed by
residents
Non
Number of final decisions [D; A+B+C]
-
1.4
approx.40%
1.2
0.8
Rate of Decisions to Grant a Patent [A/D]
50.5%
49.5%
49.1%
48.5%
48.9%
1.0
0.6
Rate of Decisions of Refusal [(B+C)/D]
49.5%
50.5%
50.9%
51.5%
8.0
51.1%
6.0
0.4
4.0
1 “The First Action” is the first notice of the examination results given by the examiner.
0.2
2.0
0
0
1995
1996
1995
1997
1996
1998
1997
1998
1999
1999
2000
2000
2001
2001
2002
20022003
2003
2004
2004
2005
2005
Source: WIPO Patent Report (2007 Edition)
Cooperation in Examination
<JPO website> http://www.jpo.go.jp/index.htm
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
IP offices,
mainly in Asia
File wrapper information
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)
JPO website (in English)
ttp://www.jpo.go.jp/
Patent Examination Result Utilization Scheme (PRUS)
JPO
Patent
Examination
Result
IPOS (Singapore)
MyIPO (Malaysia)
DIP (Thailand)
Modified Substantive Examination
Accelerated Examination
“Successful Case” of University Researches
2008
1.
Policy management
How to protect and use your IP
Legendary success
Technology
University & IP-strategy
Year
Income from the License University
Gene Bio
recombination
Field
1973
More than 250 million USD
Stanford University
Google
1996
More than 300 million USD
Stanford University
IT
2008.11.4
2.
Kenichi Hatori
Director, Intellectual Property Center
Keio University
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)
hatori‐[email protected]
3.
23
Recent outstanding research outcome from Japanese University
•
iPS cell (New versatile cell) creation technology (Kyoto University)
24
Tool for developing the researches ‐
That’s Patent!!
However, many research results fall into…
•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
Creative ideas/concepts
• Brushed up, and become more attractive!
Therefore
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
Development risk is high, No development partner gained
• Securing the originality
Result…
Neglected research outcome
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!!
No fund for continuing the research
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.
25
Intellectual Property Nation, Japan
Expectations to universities
1867
University’s 3 missions
Yukichi Fukuzawa introduced the European patent system to Japan in a book called Seiyo jijo
Patent Monopoly Act
1885
Late 1980
1991‐2002
1998
1999 First: Education
Inflation bubble Depression after the bubble explosion (lost decade)
University Technology Transfer Acceleration Law (TLO institution)
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)
Industry technology encouragement act (University faculty members can have side‐business like entrepreneur business or TLO executive members)
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
University IP maintenance operation (by MEXT: 2003‐2007)
Encourage the inventions to be kept in the university who created the invention
Started the strategic promotion for industry‐academic‐government cooperation (MEXT: 2008‐2012)
27
2000
2002
2003
2008
• Commercialization is required to return the research result to the society
• Companies (industry) and universities (academy) collaboration is required
Companies
Research result
Product
Needs
Industry – academy collaboration
Second: Research
Third: Returning the research result to the
society
28
Industry and universities have same expectations about Industry‐academia collaboration
Contributing to the society utilizing the research result…
Universities
26
Society
29
Industry
Globalization means selection and concentration!
• Company’s resources University
The 3rd mission of university
• To return the research result to the society
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
• Does not manufacture products by their own
• Collaborate with companies to develop the research result into product
Same
Expec‐
tations
30
Industry‐academia collaboration with no technology transfer organization
Need for technology transfer
Patent office
Patent application
under company name
Researcher directly deals with companies.
R
University
Lab.
rch
ea
es
r
ult
es
Company
Without technology transfer
Counter process
Researcher directly deal with companies
Deal with organization and companies that universities approve
Unclear process (no contract)
Clear process:
Deal with contract
Return for the inventor is small even if it is a great invention
Return fee based on the profit result
Research result is controlled by companies
Technology transfer to the companies who can create profits
Research fund with
no contract
COI, Conflict of Interest, could
easily happen
31
Bayh‐Dole Act as the basis of industry‐academy collaboration
Patent holder is the university. Organization for technology transfer, 32
and process on contract base.
Technology transfer organization in Japanese universities – Internal TLO and outside TLO
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
Number of org. in JP
Internal
TLO
Outside
TLO
16
Held by Univ. 9
Wide area
23
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
• 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
33
Technology Transfer at Keio Univ. (Internal TLO) Invention proposal to licensing activities
Incentives to the researchers
at Keio University
1.
Invention
proposal
Decide to apply Interview or not to apply
Interview with Patent attorney
Patent
Application
Licensing
activities
High royalty delivery to the inventors in all cases
(subtraction)
Application
Maintenance
Management
Management
Fee
15%
Half to the inventor
Half to the university
Payment will continue even after the researcher is no longer with the university
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
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. 36
Masataka Kuwana (Faculty of Medicine)
Entrepreneurship can make the best of fundamental researches in university
Number of applications – past record
at Keio University
•
Patent Application
Number
180
160
140
120
100
80
60
40
20
0
166
PCT Patent
Foreign Patent
Domestic Patent
122
1998
77
20
1999 2000
1011
16
38
30
45
43
37
2004 2005
2006 2007
41
43
2005
2006
37
34
26
30
•
•
20
20
10
7
2001 2002 2003
Fiscal Year
44
40
67
58
40
New License Contract
Number
50
99
41
11
169
146
136
83
62
00
170
157
5
10
•
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
0
1999
2000
2001
2002
2003 2004
Fiscal Year
2007
M&A by a company
and expand the business
(Joint patent application is less than half domestically, more than half in abroad)
Businesses based on the IP
Number
6
5
4
3
2
1
0
1,000yen
5
3
2
1
2
1
2000
2001
2002
2003 2004
Fiscal Year
2005
1
1
2006
2007
Income from the License
90,000
80,472
80,000
70,250
63,94959,538
70,000
60,000
45,924
42,012
50,000
40,000
30,000
16,628
20,000
11,189
10,000 2,731
0
1999 2000 2001 2002 2003 2004 2005 2006 2007
Fiscal Year
Overcome the death valley with entrepreneurship
Entrepreneurs
expand the business
Research result
37
Entrepreneurs utilizing the intellectual property by Keio University
2000
38
The age of open innovation
（by Henry Chesbrough）
11 biotechnology companies (out of 16)
Closed innovation
Open innovation
Self‐management of the fundamental Maximize the utilization of the resource research, development, and manufacturing. outside of a company. Collaborate with Utilize the internal resources
internal organizations
2001
Idea and work within the company
Collaborate with ideas and works outside of the company
Employee’s mobility is low
Employee’s mobility is high
No expectation for the entrepreneurship
Much expectation for the entrepreneurship
University is not important
University is important
Self‐business defense, block the other business, cross licensing
Joint research, licensing, hand over
Stick to company owned technology. NIH
（Not Invented Here) Syndrome.
Maximum profit, save time and money
Distribute the risks of starting new businesses
Participate in new field and new market40
2002
2005
2003
2006
2004
2007
39
Active joint research and licensing in open innovation environment
Research
研究
研究
Research
研究
研究
Research
Intellectual property plays an important rule to effectively utilize the university’s research result
Under open innovation
• Joint research
研究
研究
Research
– Intellectual property to call in joint researches
– Intellectual property as the result of joint reseach
University
• Licensing contract
– Intellectual property is the licensing property
Development
Development
Development
Manufacture
Manufacture
Manufacture
Sales
Sales
Sales
In entrepreneurship
• Effectively deploy the business if there are Intellectual property
– Monopolize the market, Cross‐licensing, negotiation tool
Closed innovation
Open innovation
41
42
Acquiring patent is expensive! Detailed inspection, and maintenance afterwards..
Apply
1
2
3
…..
4
17
18
19
20
END
(year)
Domestic preferential enhancement period
…
unpublished
PCT Domestic transfer
extension period
Period before request for examination
…
Check1 (Application time)
Patent registration
PCT Foreign application
Thank you very much!
Maintenance
and readjustment
Check2 (Applying to foreign countries)
Check3 (PCT domestic transfer time)
Check4 (Review request, reasoning the rejection, judgment request)
Check5 (when receiving the pension)
43
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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 e-mail.
• When you protect your business plan document file with PIN No, please
change that pin no to “soiasiapartner” for incubator’s convenience.
• e-mail address is [email protected]
• Title of this inquiry mail is “inquiry to incubator by your name
Business Plan Contest at SOI Asia 2008 Website here!
http://www.soi.wide.ad.jp/soi-asia/entre/2008-business_contest/
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