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2010/IPEG/SYM/003

Measures for Encouraging Patent Licensing - INPIT Challenges

Submitted by: Japan

 

Innovating Intellectual Property Exploitation Symposium

Sendai, Japan9 September 2010

9/25/2010

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September 9, 2010September 9, 2010

The APEC IP Symposium "Innovating IP Exploitation"Session 2 Full Utilization of IP Rights

IP Licensing in Japan

Measures for Measures for Encouraging Patent LicensingEncouraging Patent Licensing

~ INPIT’s Challenges ~~ INPIT’s Challenges ~

Akihisa KamegayaDirector of Licensing Promotion Department

National Center for Industrial Property

Information and Training (INPIT)

1. Background

OutlineOutline

Situation of Patent Utilization Promotion of Intellectual Creation CycleImportance of Open InnovationPotential Benefits of Patent Licensing

2. INPIT’s projects for Encouraging Patent LicensingProject1: Promoting patent licensing through the active use of human resourcesProject2:Providing information on licensable patents and promoting the active

utilization of those patents

1

utilization of those patentsProject3:Supporting the development of businesses dealing in IPRs

3. Future

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Q: How many of the patent rights are actually used (utilized by their patentees or licensed) in Japan?

Situation of Patent UtilizationSituation of Patent Utilization

A: 584,994 (51.4%) in FY 2008

The ratio of used patents is almost equal to as the one of unused patents in Japan.

Note: If it is owned400 000

600,000

800,000

1,000,000

1,200,000

of r

ight

s ow

ned

（

Number of rights unused

Note: If it is owned simply to prevent others from entering the market or its use is just under consideration, it is regarded as unused.

0

200,000

400,000

FY2003 FY2004 FY2005 FY2006 FY2007 FY2008

Num

ber

o

Number of rights used

2

The “Intellectual creation cycle” is a cycle of creation / protection / exploitation of intellectual property that enhances Japanese international competitiveness and will transform Japan into an intellectual property-based nation.

Promotion of Intellectual Creation CyclePromotion of Intellectual Creation Cycle

CreationCreation（（Research &Research &Development)Development)

Intellectual Creation Cycle

InventionProfit

3

Creation CycleExploitationExploitation

（（Licensing &Licensing &Recovery of costs)Recovery of costs)

ProtectionProtection（（Acquisition of rights)Acquisition of rights)

IP Rights

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Research

Importance of Open InnovationImportance of Open Innovation

Development Commercialization

Other company

Other company

Research output

Co

mp

any

Other company

sin

ess

do

mai

n

Product

University / Research Institution

Bu

s

= Non-manufacturers

IP is expected to function as an infrastructure facilitating the distribution of knowledge and technology.

4

【Licensor companies】

Increasing the importance of

Technology Licensors Technology LicenseesMatching（Patent Licensing）

Potential BenefitsPotential Benefits of Patent LicensingPatent Licensing

Increasing the importance of patent licensing as business property

→Increasing the profits from licensing, and increasing

the recovery of research and development investment.

Creating the strategic exploitation of patent assets

→Alliance formation based principally on a company’s

proprietary technologies

【Universities and research institutes 】

Adding social contributions to educational institute’s

other two roles of education and research

→Sharing research results with industries （utilization）

【Licensee companies 】

Effective utilization of external resources in R&D activities （“Selection and Focus” strategy for R&D）

→Enhanced efficiency and reduction of R&D risk

Revitalizing a company’s business by advancing in new business fields and developing higher value-added products

Procuring research funds

○Engaging in the intellectual property business in order to realize more active utilization of patented technologies→Growth and development of patent licensing and technology transfer markets

○Proactive methods for promoting patents→Formulation of intellectual property policy and promotion of proactive methods in local governments

Intellectual Property Rights Transactions

Administrative Agencies

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Project 1:Promoting patent licensing through the active use of human resources

Dispatching patent licensing advisers

Projects for Encouraging Patent LicensingProjects for Encouraging Patent Licensing

Projects 2:Providing information on licensable patents and promoting the active utilization of those patents

Building a patent licensing database Building a research tool patent database Dispatching patent information advisors

Projects 3:Supporting the development of businesses Projects 3:Supporting the development of businesses dealing in IPRs

Providing a technology transfer company directory Holding patent business markets Holding international patent licensing seminars

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83 Patent Licensing Advisers provide a wide range of support services covering the whole process of technology transfer, from discovering licensable technologies and grasping technological needs to concluding licensing contracts.

Dispatch of Patent Licensing AdvisersDispatch of Patent Licensing Advisers

Project 1

Companies Companies (Potential Licensees)(Potential Licensees)

Companies, universities Companies, universities and research institutesand research institutes

(Potential Licensors)(Potential Licensors)

Where can we find the technological seeds that we need?

Which company can make use of our technology?

How should we handle licensing negotiations?

Technology transfer supported by patent licensing advisers

Official specialists in technology transfer

Dispatch 83 Advisers to local governments and TLOs all over Japan (September 2010)

Collect information on technological needs and licensable technology seeds

Give advice to make seeds match needs, negotiate and make contracts

Consultation and advice: Free of charge

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Outcomes : patent licensing contracts

16 000

Project 1

The total number of

successful patent licensing

contracts had reached

13,427 at the end of March

2010 compared with only

6 at the initial offering of the

service in 19971,416 1,452 1,303

5,461

7,485

9,256

10,672

12,124

13427

6 130409

890 1,223 1,3792,0241,381 1,771

6 49179 588

1,4782,701

4,080

2,000

4,000

6,000

8,000

10,000

12,000

14,000

16,000

The n

um

ber

of contr

acts

The number of cases each year

Total amount of cases

service in 1997. 6 4313049

0

1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

Fiscal Year

8

Successful Cases by Technical Field

The successful cases shows that licensing was conducted in a wide variety of technical fields.

Project 1

Distribution of the number of successful licensing businesses at the end of March, 2009

Textiles&Paper2%

Metallic Materials2%

Organic Materials2%

Information Chemicals

Electricity&Electronics

17%

other2%

Inorganic Materials2%

Transportation1%

9

Mashinery&Processing

18%Civil Engineering&Architecture

13%

Lifestyle&Culture11%

Food products&Biotechnology

12%

&Communication4%

&Pharmaceuticals14%

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Distribution of Licensors and Licensees in Successful Cases The distribution of licensors and licensees in licensing agreements made through

the Measures for Encouraging Patent Licensing is shown below.

F li th ti f l i 26% t M h 2000 b t d d

Project 1

For licensors, the ratio of large companies was 26% at March,2000 but decreased in 2009 (3%), however the ratio of SMEs and TLOs increased.

For licensees, the ratio of large companies has been increasing recently, but SMEs still represent a larger ratio(71%).

individuals2%

unions.etc1%

TLO0%National and

publicresearchinstitutes

1%

Largecompanies

24%

Licensee

unions.etc0%

individuals10%

Largecompanies

3%

Licensor

SMEs71%

TLO44%

National andpublic

researchinstitutes

9%

SMEs34%

As of end of FY2009

10

Geographical relationship between Licensors and Licensee Patent licensing adviser’s network is nationwide

In principle, the patent licensing advisers dispatched to local governments t SME i th i l l t’

Project 1

support SMEs in their local government’s area.

But 59% licensors and licensees were successfully concluded licensing contracts with licensees and licensors in different local area by adviser’s Network

same prefecture41 %Geographical relationship

between Licensors and Licenseeat the end of March, 2009

different prefectures59 %

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at the end of March, 2009

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Outcomes : Economic Impact 1997-2009

INPIT conduct a follow-up inquiry about Economic Impact and Business Expenses of INPIT’s policies

Project 1

p p

The total impact had reached ¥ 329 billion by the end of Dec 2009.

It was 8.9 times as large as the total amount of invested costs.

2,045

2,404

2,674

3,003

3,290

2,000

2,500

3,000

3,500

& p

roje

ct c

ost

0mill

ion

yen)

15142

258462

1,175

1,578

173 214 254 286 315 343 369

331349658

0

500

1,000

1,500

1997-1999 1997-2000 1997-2001 1997-2002 1997-2003 1997-2004 1997-2005 1997-2006 1997-2007 1997-2008 1997-2009

Eco

nom

ic im

pact

(in

uni

ts o

f 10

0

Amount of economic impact Project Cost

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Example 1

Licensor: SB System Inc.(V.B., Fukui Prefecture)

Licensee: Internet Initiative Japan Inc. (LE, Tokyo)

Project 1

<<Image>>

Patent No. 3943118- “Treasure Map Method (TMM)”- Technology for giving security of Information

via: AD dispatched to Fukui Prefecture

Too difficult to restore

Dummy info

Breakup

Fukui

Tokyo

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Licensor: Gifu University(Prof. Miwa)

Licensee: Nac Corporation (SME)

Project 1

Example 2

Patent No. 3156058- Crazed film with selective horizon, and its manufacture approach

<<University – Industry Collaboration>>

Developing new products by applying some novel

via: AD dispatched to Chubu Area

Developing new products by applying some novel characteristics, of the crazed films.

More than 40 patents were filed.

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Patent Licensing Database

Patent Licensing DBPatent Licensing DB

Project 2

Registration& RetrievalFree of Charge

Patent Licensing DBPatent Licensing DB

- Patent Licensing Information

- Information on Demand for Technologies

Provide PLDB Provide PLDB via The Internetvia The Internet

Partieswho want to disclose

licensable patents

Parties seekinglicensable patents

Companies Companies (Potential Licensees)(Potential Licensees)

Companies, universities Companies, universities and research institutesand research institutes

(Potential Licensors)(Potential Licensors)

Database: one can retrieve, in only a single search, licensable patents of companies, universities and research institutes on the Internet.

About 46,000 licensable patents including 24,000 licensable patents from universities, TLOs and research institutes (July 2010)

Potential Users: Anyone in the world (English version is available)

Free of Charge

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Patent Licensing Database

Project 2

Search Result Page

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Patent Information Advisors (PIA) (another Advisor for SMEs) In the current process of promoting the creation, protection, and utilization of IP, it is a key

strategy to effectively use patent information, which contains both information on rights and i f ti th l t t t h l i

Project 2

information on the latest technologies.

In order to help SMEs, universities, and research institutes effectively use patent information,

52 Patent Information Advisers (PIA) are dispatched to local governments to respond to various requests regarding the use of patent information, holding workshops and giving instruction and advice on searching and using patent information (including demonstration of searching).

Patent Information Advisor Dispatching (PIAD)

Giving advice on the promotion of the effective use of patent information with the aim of supporting local SMEs and venture companies in carrying out technology development and obtaining and managing patent rights.

Advisers’Tasks

Consultation services at local basesGeneral instruction on the search anduse of patent information in general

On-site consultation and adviceGeneral in-house training on the searchand use of patent information in general

Lectures at workshopsLectures at seminars

hosted by local governments

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International Patent Licensing Seminars

Keynote Speeches and Panel Discussions by foreign and Japanese technology transfer experts actively working in the frontline of business.

Project 3

Providing a place to acquire global Ideas on technology transfer as well as a forum enabling participants to build connections with technology transfer experts in Japan and overseas

About 2,500 participants, Including the members of the Association of University Technology Managers (AUTM) and of the Licensing Executives Society International (LESI)

Coming seminar ;International patent Licensing Seminar 2011January 24 – 25, 2011Tokyo, JAPAN (Hotel Nikko Tokyo)Registration free!

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Patent Business Market

Patented TechnologyPatented Technology Bussiness PlanBussiness Plan＋

Project 3

Presentation

Bank, Finance Company, Venture Capital, Trade Firm,Bank, Finance Company, Venture Capital, Trade Firm,Patent Licensing Adviser, Leading Companies, etc.Patent Licensing Adviser, Leading Companies, etc.

Offering Alliances

Owners who have technological seeds, or licensable patents, present information on their technologies, business plan and contract basis, etc.

Participants can make various kinds of alliances. (license contract, joint research, sponsor contract)

The Patent Business Market is held 4 times a year

The 8 Patent Business Markets held by local governments is supported in 2010.

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Thank you very muchThank you very muchf tt ti !f tt ti !for your attention!for your attention!

http://www.ryutu.inpit.go.jp/index.html