Strategic Support for Acquisition and Licensing of Intellectual Property Right (IPR)

Transcription

1 Technology Transfer Activity 5 Strategic Support for Acquisition and Licensing of Intellectual Property Right (IPR) ---- Activities of CIPS/JST---- September 15 th, 2009 Shigeto NITTA Center for Intellectual Property Strategies (CIPS) Japan Science and Technology Agency 1

2 Program: Tech Transfer Activities 10:00- Overview of JST's Technology Transfer Activity Competitive Funding Program 10:10- New Technology transfer Program A-STEP Bottom-up 10:20- Strategic Promotion of Innovative Research Top-down and Development 10:35- Comprehensive Support Programs for Regionally- Creation of Regional Innovation oriented 10:50- Q&A(1) Intellectual Property & Various supports 11:00- The Circumstances of IP surrounding IP Japanese Universities and Our Mission 11:15- Strategic support for acquisition and licensing IP of IPR 11:30- Linking mechanism of research results to Supports practical application 11:45- Q&A(2)

3 Outline 1.Making IP strategies 2.Patent analytics for IP strategies 3.Support for IPR acquisition 4.Licensing 3

4 Started April IP Strategy Planning 1. Making IP strategies --Contribution to the design of the national IP strategies --IP strategies in JST programs 2. Patent analytics for IP strategies --Support Universities/Colleges and JST programs to draw up the IP strategies. 4

5 1.Making IP strategies 2.Patent analytics for IP strategies R&D funding programs JST IP strategies, Patent analytics CIPS Opinions on IP Government & affiliated agencies (JPO, INPIT etc.) Universities/Colleges TLOs Industrial circle IP strategies Patent analytics 5

6 Outline 1.Making IP strategies 2.Patent analytics for IP strategies 3.Support for IPR acquisition 4.Licensing 6

7 3.Support for IPR acquisition JST Patent Application Support System Ⅰ.Target and Number of Patents to support Inventions; * From Universities/Colleges and TLOs, * Have been applied for domestically, * Are awaiting foreign patent application, * In response to request from university to JST Inventions supported; 600-1,000/ year 7

8 3.Support for IPR acquisition JST Patent Application Support System Ⅱ.Forms of support (1) Search of prior art by JST s technical councilors totally 19 persons (2) Assess and give advice from Intellectual Committee 4 subcommittees (9 work groups), totally 58 examiners with individual expertise (3) Bear the expense for foreign application (But JST is never an applicant!) part p of the expense needed to obtain a patent (registration fee, translation fee, patent attorney fee, etc.) when licensing is made, actual expense appropriated shall be reimbursed 8

9 3.Support for IPR acquisition PCT System & JST Patent Application Support System PCT System International Phase National Phase International Application 12M 15M 28M 30M After the Patent Granted International Search Report Application in Japan (by Universities or TLOs) International Preliminary Examination Report JST Patent Application Support System 0M 6M 12M 24M(2Ys) 30M(2.5Ys) Max 20Ys Apply with JST Apply with JST(to designate countries) 6M--> Apply with JST 24M--> -Assessment of technology level and patentability by Patent Professional Researcher e (19 persons) s) - Advice for Brushing-Up the description - Decision by the JST IP Committee Patent Granted at each country 9

10 3.Support for IPR acquisition FY2008 Results of Assessment Number of Assessments : 1265 Not supported Supported 46% 54% International Application [Breakdown] National Phase Number of Assessments: 806 Number of Assessments: 459 Not supported Supported Not supported Supported 52% 48% 35% 65% 10

11 3.Support for IPR acquisition Not to support 46% FY2008 Results of Assessment --Advice by Intellectual t l Committee-- Number of Assessment : 1265 Need to be amended (Data to be added, Claims to be revised) 54% Need not be amended Support 54% 23% 54% 77% [Breakdown] International Application National Phase 46% Not supported Supported dnot supported Supported 52% 48% 35% 65% 11

12 3.Support for IPR acquisition 4% Not to support 46% FY2008 Results of Assessment --Reasons why not to support-- Number of Assessment : % 32% 56% International Application Lack of patentability by inventor's 6% literature Lack of patentability by other literature t Lack of practicability 88% and/or marketability Other reasons [Breakdown] National Phase 2% 4% Support 54% Not supported Supported dnot supported Supported 12 52% 48% 35% 65%

13 3.Support for IPR acquisition Statistics March 31, 2009 Total number of inventions supported: 2,746 Included in the total number of invention applied with each country supported: 1,099 The total number of patent application for each country supported: 3,399 Canada 108 EPO (558) USA U.S.A Germany 513 China 238 U.K. 377 Others 60 Korea 173 France 340 Taiwan125 Swiss 94 Thailand 26 Italia 64 India 20 Netherland 59 Sweden 43 Finland 20 Australia 35 Spain 15 Austria 10 13

14 Outline 1.Making IP strategies 2.Patent analytics for IP strategies 3.Support for IPR acquisition 4.Licensing 14

15 4. Licensing Framework of Licensing Group License JST s patents and (when requested) Universities/Colleges patents Persons with experience in companies do licensing activities using their experiences and networks with the industries. Marketing and negotiating : 4 persons Writing contracts : 3 persons 15

16 4. Licensing Marketing Tools 1. J-STORE: 2. New Technology Presentation Meeting 3. Innovation JAPAN 16

17 4. Licensing Schedule of participating i in exhibitions abroad Sep , 2009 Int l Invention Show & Technomart in Taipei Oct. 18, 2009 LES USA & Canada in San Francisco Feb Mar. 5, 2010 Pittcon in Orlando 17

18 4. Licensing Companies & patents licensed by JST Number of companies licensed Number of patents licensed 250 $1,400, $1,200, $1,000, $800, $600, $400, $200, $

19 4. Licensing Representative Examples Product: Asymmetric Transfer Hydrogenation Catalysts Inventors: Dr. Ryoji Noyori et al. Product: Humanoid Robot : PINO Inventors: Dr. Hiroaki Kitano et al. Product: CLBO Crystal Inventors: Dr. Takatomo Sasaki et al. 19

20 Summary JST Opinions on IP Strategies Planning Government-affiliated agencies (JPO, INPIT R&D IP strategies, funding Patent analytics CIPS etc.) programs Licensing Applicatio n Support Universities/Colleges TLOs Industrial circle Support on IP 20

21 Thank you!