Managing Joint R&D: An Investigation into Joint Patent Applications in Japan, US and Europe

Transcription

1 Managing Joint R&D: An Investigation into Joint Patent Applications in Japan, US and Europe Toshio Hashimoto Department of Technology Management Graduate School of Innovation Management Tokyo Institute of Technology Prof Yoshitoshi Tanaka Department of Technology Management Graduate School of Innovation Management Tokyo Institute of Technology Dr Angela Adrian School of Law & Justice Southern Cross University Abstract. This research focuses on joint patent applications which have been produced from joint Research & Development (R&D) collaborations. There has been limited past research in this area. This research compares and analyses joint patent applications from Japan, US and Europe, clarifying the differences and features for successful joint R&D through statistical analysis between these regions. The most important factors are the field of technology, the situation of cooperation, the difference of patent law and its practice in each region, the conditions of the joint R&D agreement, and the strategy for joint R&D. A conclusion will be drawn: The more advantageous the regulation of coowned patents is, the greater the number of joint patent applications is filed in that country s patent office. 1. Introduction Globalization has had its impact on technological developments especially in the area of Research and Development (R&D). 1 Shifts in information technology and the transportability of knowledge in a post-industrial world have resulted in the easier cross-border transmission of knowledge, people and labour. 2 Globalization has 1 Selvam, Jesiah (2010) Response of Higher Education to Globalisation Empirical Evidences from India, 12 Journal of Social and Economic Development 2; Shin, J. & Harman, G. (2009) New Challenges for Higher Education: Global Perspectives, 10 Asia Pacific Educ Rev 1 2 UNESCO (2012) New Patterns in Student Mobility in the Southern Africa Development Community, United Nations Educational, Scientific and Cultural Organization; Guruz, K. (2008) Higher Education and International Student Mobility in the Global Knowledge Economy, Albany, NY: SUNY Press; Rizvi, F. (2004) Globalisation and the Dilemmas of Australian Higher Education, 23 Critical Perspectives on Communication, Cultural and Policy Studies 33

2 resulted in a paradigm shift in scale and scope underpinning the relevance of, and a need for a strategy for R&D. 3 Ideas are both global and local in the sense that local imperatives such as culture, jurisdiction, geography, language, etc. remain significant even as pressures for, and advantages from, globalization increase markedly. For example automobiles, automobile companies have rapidly developed environmental technology such as hybrid vehicles (HV), electric vehicles (EV), plug-in hybrid vehicles (PHV) and fuel-cell vehicles (FCV) to correspond with the rise of environmental awareness by customers in the market. For automobile enterprises to develop such vehicles, they ought to have collaborated with other enterprises which have expertise in the technologies of battery, motor, and/or inverter and so on. This is especially true if, they did not have such technical capabilities or specialities as well as to shorten their development period. Many methods for utilizing the technical capabilities of outside partners include: purchasing the product from a specialized enterprise, obtaining a technical license from the specialized enterprise, or carrying out joint R&D with the specialized enterprise. However, the technological advantage of their competitors cannot be obtained merely by purchasing the product. It can be obtained through licensing, if new technology can be developed based on that license technology. However, the licenser may require the licensee to grant back the improved technology, so they may not take a technical advantage to be differentiated with their competitors. On the other hand, the method of joint R&D can strengthen the technical capability of both enterprises entering in the joint R&D. So it is considered that the joint R&D is an important method of open innovation. 4 Enterprises should utilize and manage joint R&D efficiently in order to implement such outside technology and to improve their own technology. When an enterprise enters into joint R&D, certain outcomes are expected such as: know-how, drawings, programs, patents, utility models, design and/or copyright. All of these R&D results become the shared property between partners, based on the contribution of development or the provisions of the joint developing agreement. By investigating joint patent application, we can extrapolate the number and success rates of actual joint R&D agreements. Table 1 shows the number of joint patent applications filed with the Japanese Patent Office (JPO), the United States Patent and Trademark Office (USTPO) and the European Patent Office (EPO) as of This shows a remarkable difference between Japan, US, and Europe. The number joint patent applications filed with JPO are the largest and are about twice those filed with the USPTO and about three times the number filed with the EPO. 5 Why is the number of joint patent applications different among regions of Japan, US, and Europe? The factor of these differences of the joint patent applications may be considered to depend on the characteristic of business practice in each region. Further, the result of joint R&D becomes the shared property of both partners and the said shared result is the immaterial intellectual property rights. The legal interpretation of these objects differs in each country due to the differences in the regulation of law. So the joint patent applications can be also be affected by the different regulation of law in each country. 3 Hudzik, John (2011) Comprehensive Internationalisation: From Concept to Action, NAFSA: Association of International Educators 4 Chesbrough, H (2003) Open Innovation: The New Imperative for Creating and Profiting from Technology, Boston: Harvard Business School Press 5 Thomson Innovation (2012) at

3 In past research regarding the joint patent applications, in Japan, it was pointed out that the rate of joint patent applications filed with the JPO from 1992 through 2004, was approximately 8% of all patent applications, and the ratio of applicants engaged in such joint patent applications was approximately 39 % and the networks of joint patent applications among applicants kept on growth in Japan. 6 In the United States, the number of co-owned patents to USPTO was growing as of 1989 to as of 1998, in spite of difficulty of co-owned patents from a legal aspect. 7 It was shown that the practical use of joint R&D is progressing. However, previous investigations into this area did not the regulation of co-owned patents in patent law between each country nor explain data from the joint patent applications comparatively. Enterprises of each country have a different strategy for filing patents. Further, the difference in patent law for each country affects such enterprises strategy. This research focuses on both aspects of the difference in patent law between each region and the situation of joint patent applications as a result of joint R&D. 30,000 25,000 20,000 15,000 10,000 5, ,813 number of joint patent applications ratio of joint patent applications (%) 7.8% 8, % 3.5% 12,979 JPO EPO USPTO 9.0% 8.0% 7.0% 6.0% 5.0% 4.0% 3.0% 2.0% 1.0% 0.0% Ratio of joint patent applications is calculated from number of joint patent applications divided by total patent applications (same below in this paper) Table 1: Joint patent applications filing to JPO, EPO and USPTO as of Joint R&D and joint patent applications in Japan Toyota Motor and BMW announced in June, 2012 that they would strengthen alliance in environmental technology, and enter into the Joint R&D mainly in four fields as follows: the fuel cell system, the electric technology of HV, the sports car technology and the weight reduction technology. 9 The greatest aim is the preceding of mass production with the fuel-cell vehicle (FCV) regarded as the next-generation environment-friendly car. Toyota Motor plans FCV mass production in 2015 when environmental regulation is expected to be tightened up globally. For this reason, 6 Ogiwara, T (2007) An Analysis on Joint Patenting Networks in Japan, 54 Research of Economics, Kobe University 49; Inoue, H (2010) An Analysis of Transaction and Joint Patent Application Networks at arxiv v1 [cs.si] 7 Hagedoorn, J (2003) Sharing Intellectual Property Rights: An Exploratory Study of Joint Patenting amongst Companies 12 Industrial and Corporate Change 5 8 Thomson Innovation (2012) at 9 BMW Press Release (2012) BMW Group and Toyota Motor Corporation agree to further strengthen collaboration, available at

4 Toyota Motor decided to enter into joint R&D with an outside partner rather than pursue independent development. 10 Further, Toyota Motor and Tesla Motor announced that they developed the electric vehicle for US market on May, Toyota Motor and Tesla Motor reached a basic agreement in May, 2010 for a business tie-up with joint development of EV, its part, a manufacturing system, and manufacturing technique. Toyota Motor had not developed EV for the market itself, but utilized Tesla Motor s technology of EV through joint R&D. Toyota Motor succeeded in spreading its business and technology capability via this joint R&D. This new EV has come to market in two years after the tie-up announcement which is a very short period development. 12 Panasonic also entered into the joint R&D of the next-generation lithium ion battery for EV with Tesla Motor in November, Toyota Motor established the joint stock company of the battery with Panasonic in 1996, and keeps a good relation with Panasonic. 14 EV development has accelerated because of the collaboration among the three enterprises of Tesla Motor, Toyota Motor and Panasonic. Table 2 shows the Top 5 enterprises and the number of joint patent application filed with JPO in In Japan the electrical technology field and automobile technology field are the most prosperous areas to collaborate with outside partners on joint R&D. In turn, these enterprises file many joint patent applications with JPO as a result of the joint R&D. Once upon a time, Japanese enterprises argued that they had many affiliates or subsidiaries which made a huge and strong network. However, due to increasingly advanced technologies, these enterprises have fumbled for the partners outside of such affiliates or subsidiaries, which would have expertise that could strengthen their own technological capacity, assist in differentiating them from competitors, and utilizing technology in developing countries to offset intensified price competition. Table 3 shows the trend of Toyota Motor s patent application to JPO from 2001 to Especially the number of patent application of H.ELECTRICITY has grown significantly. 17 In the automobile industry, the development of environmental technology such as hybrid (HV), electric vehicle (EV), and plug-in hybrid (PHV) have progressed rapidly in order to correspond to the market demand of environmental 10 Fallah, A (2012) Toyota Hydrogen Fuel Cell coming in 2015 available at 11 Tesla Go Electric at 12 Nguyen, D (2010) Tesla and Toyota to open an Electric Car Plant in California available at 13 Panasonic Press Release (2010), Panasonic Invests $30 Million in Tesla: Companies Strengthen Collaborative Relationship available at 1&itemId=606002&modelNo=Content &surfModel=Content In 1996, Toyota formed a joint venture (JV) with Panasonic and the two companies have collaborated on battery production for hybrid and electric vehicles ever since. Back then, Panasonic had a controlling interest in the JV (60 percent), so it was appropriately named Panasonic EV Energy Co. Then, in 2005 and again this year, Toyota rolled more dough into the JV, bringing its share to 80.5 percent. With Panasonic's reduced interest, it has been decided that a name change was in order. Loveday, E (2010) Toyota s Battery Venture with Panasonic gets Renamed Primearth EV Energy available at 15 Thomson Innovation (2012) at 16 Ibid 17 The International Patent Classification (IPC) provides for a hierarchical system of language independent symbols for the classification of patents and utility models according to the different areas of technology to which they pertain.

5 technology products. This development of technology needs to be combined with the conventional technology of the automobile fields with the electrical technology outside automobile fields. Table 3 also shows the increase of the joint patent applications of H.ELECTRICITY with red colour line (inside line). Toyota Motor seems to succeed in strengthening its own technical capability in environmental technology relating to the electric fields, which mean for example, battery technology. The code of H01M 18 is one of the subclass of H.ELECTRICITY, which covers the battery technology. Table 4 shows the trend of patent application of H01M by Toyota Motor. The rate of patent application between 1999 and 2002 is high and reaching to approximately 30%. 19 In this period, joint patent applications with the JPO between Toyota Motor and Panasonic have been filed frequently. In this period, it can be argued that joint R&D between Toyota Motor and Panasonic was taking place. Later, Toyota Motor increased the number of regular patent applications in H01M. This demonstrates successful examples of joint R&D between Japanese enterprises. Joint R&D strengthened the technical capability of one enterprise by utilizing external technical capabilities effectively and being open to others innovations. Due to the requirement of rapid technical advancement and restrictions of investment for development, it is necessary for enterprises to utilize the scheme of joint R&D schemes effectively to avoid these problems, or risk failing to bring new products to market in a timely manner. Considering the results of joint R&D, some important joint inventions are created for which joint patent applications must be filed in each patent office of each country. However, the various regulations of patent law and Civil Code of each country must be recognized between co-owners, because of the sharing of one right between two or more parties. These regulations affect the practical use of joint patent applications, and also affect carrying out the joint R&D. The following section considers a co-owned patent from legal aspects. Table 2: Top 5 enterprises of joint patent application to JPO as of Applicant Number of Number of joint application application ratio 1 TOSHIBA CORP 7,119 1,882 26% 2 TOYOTA MOTOR CORP 7,374 1,774 24% 3 SANYO ELECTRIC CO LTD 2, % 4 MITSUBISHI ELECTRIC CORP 4, % 5 SUMITOMO ELECTRIC IND LTD 1, % 18 Subclass of IPC, Processes or Means, e.g. Batteries, for the direct conversion of chemical energy into electrical energy. 19 Thomson Innovation (2012) at 20 Thomson Innovation (2012) at

6 (Number) Table 3: Toyota Motor's patent applications filing to JPO according to IPC regular patent application by Toyota Motor (number) rate of joint patent application (%) 50% 40% 30% 20% 10% 0% Table 4: patent application of IPC H01M to JPO by Toyota Motor Patent law by country for co-owned patents In Japan, a patentee shall have the exclusive right to work the patented invention as a business. 23 Such "Work" of an invention means, in the case of an invention of a product, producing, using, assigning, exporting or importing, or offering for assignment. 24 And a patentee may demand a person who infringes or is likely to infringe the patent right to stop or prevent such infringement. 25 The patent right is a kind of property rights. Moreover, the patent is not a tangible asset, so it is considered an immaterial property right according to the theory announced by Josef Kohler 26 in 1875, which is today's accepted theory. The point Josef Kohler indicated was that an immaterial property right is different from a general property right according to the following four points. 21 Ibid 22 Ibid 23 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 68; translation available at 24 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 2.3; translation available at 25 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 100; translation available at 26 Josef Kohler (March 9, 1849 Offenburg - August 3, 1919 Charlottenburg) was a German jurist, author and poet. The definition of invention in Japanese Patent Law was introduced by him in 1959.

7 1. Patent right is certainly limited in time. 2. A separate patent right is given in each country. (1 country 1 patent principle) 3. It does not have a location on an outside. 4. There should be no existence on an outside. Therefore, this cannot be occupied. 27 Following the 1 country 1 patent principle, the proprietary character of patent right is variously interpreted by each country; especially as each country differs in coownership of a property right by two or more parties. This property right entails two kinds of rights: a real right and a claim in Civil Code, since a patent right has the peculiarity of an immaterial property right. Strictly speaking, a patent right is not applied to both a real right and a claim. A patent right is the exclusive right to work the patented invention, but it is not a tangible asset like land, so it is not completely applied to a real right. On the other hand, the object of a patent right is not a person like an obligee or obligor, but an invention which means the advanced creation of technical ideas, so it is not completely applied to a claim. Thus, it can be considered that when dealing with a patent right either as a real right or a claim changes with the differences in historical perspectives, background or purpose each country allots to its patents. The differences between a real right and a claim are shown in Table 5. A real right is the right to govern a property directly; and a claim is the right that the obligee can demand as doing something acts to the obligor. A real right can ask for the exclusion from disturbance of all people; however, a claim is a right only against an obligor. So a real right is called an absolute right; and a claim is called a relative right. Two or more real rights of the same contents cannot exist in the same thing, so there is exclusivity in a real right. However, it is possible for two or more claims in the same contents to exist in the same obligor, so there is no exclusivity in a claim.28 These differences of the characteristic between a real right and a claim influence how to recognize and handle the patent rights of each country. Table 6 shows the difference of provisions for co-owned patents by each country. They are designated as follows: 1. Utilization by each co-owner, 2. License to third party, 3. Assignment to third party, and 4. Defence against infringement. The co-owner may need or not need to acquire prior consent from the other coowners, as agreed upon by contract among co-owners, when doing such activities from 1) to 4). The regulation of patent law is applied to such activities preferentially. However, if there is no regulation in patent law, the Civil Code is applied to co-owned patents. To support the foregoing argument, Table 6 shows the bold & italic letters as Need or Not need meaning how a co-owned patent is handled as a "claim" in each country s regulation of law. 27 Yoshifuji, K. (2000) Tokkyoho Gaisetsu (The Outline of Patent Law) Tokyo: Yuhikaku Publishing Co. 28 Uchida, M. (2008) Minpo Sosoku (The General Provisions of Civil Code) 4th ed. Tokyo: University of Tokyo Press

8 3.1 Utilization by Each Co-owner Firstly, utilization is the most important regulation when co-owners work a patented invention. In the patent law of each country, the free Work by co-owners is accepted in principle. Since the object of patent rights are intangible property rights, it is impossible to consider such work according to the shared part. In addition, such work by co-owners does not become a hindrance of work by other co-owners. 29 In Japanese patent law, unless otherwise agreed upon by contract, each co-owner may work the patented invention without the consent of other co-owners. 30 The patent laws of other countries have almost the same regulations regarding utilization. For example, in French patent law, the precondition for carrying out work is described as: Each joint owner may work the invention for his own benefit subject to equitably compensating the other joint owners who do not personally work the invention or who have not granted a license. 31 However, only if compensation is paid out by the co-owners to the other coowners, the co-owner can work the invention of patent. As such, this precondition is not a perfect prevention of independent utilization. As the number of joint R&D ventures with universities or public research organizations is increasing, this regulation makes it easy to develop R&D jointly with such entities. 3.2 Licenses to Third Parties Needless to say, there are different regulations of licenses to third party and assignments to third party between Japan, United Kingdom, Germany, United States, France and other countries. In Japanese patent law, when a patent right is co-owned, no co-owner may grant an exclusive license or non-exclusive license with regard to the patent right to any third party without the consent of all the other co-owners. 32 This is based upon the idea that a patent right is regarded as a real right. A real right is an absolute and exclusive right. On the other hand, a patent right can be extended through a license to a third party when regarded as an immaterial property right or claim. If a co-owner can grant a license freely, it is the same as making a real right a claim. In countries where this reasoning exists, licenses may not be freely given, but granted only when coowners' consent is obtained. On the other hand, where patent rights are considered solely as a claim, licenses are more freely given. Since a claim is the right which can require the doing of something between the obligee and the obligor. Claims can exist for two or more people as a non-exclusive right and a relative right. Furthermore, it is thought that the difference between these patent laws is affected by the patent s purpose. The purpose of Japanese patent law says that through promoting the protection and the utilization of inventions, to encourage inventions, and thereby to contribute to the development of industry. 33 Japan was not as economically strong as other developed 29 Nakayama, N. (2000) Kogyosyoyukenho Jo Tokkyoho (Industrial Property Law: Vol 1 Patent Law) 2nd ed. Nagoya City: Kobundo Inc. 30 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 73(2); translation available at 31 Code de la propriété intellectuelle (1992) Article L613-29(a) (Intellectual Property Law, France) 32 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 73(3); translation available at 33 Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 1; translation available at

9 nations at the time its patent law system was established. As such it set out to promote industry as the goal of its patent law. On the other hand, in the United States patent law had its purpose defined in its Constitution. To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. 34 That is, an individual right is respected as much as possible, and it seems to be based on the thought that private rights should not be restricted for public welfare. The Japanese Patent Office explained its philosophy as follows in its articles description. 35 Since co-owners of a patent can carry out the patent freely not just related to the share of such patent, the other co-owners of patent are subject to influence according to the other owners funds and management powers. This allows other coowners to exist as competitors. Therefore, such a regulation is adopted, which can prevent a third party from gaining a share from one co-owner against the wishes of the other co-owners. It can be thought that Japanese patent law has realized patent right to be a real right based on the purpose of patent law to contribute to the development of industry. 3.3 Assignments to Third Parties Next, assignments to third parties shall be examined. Although there is no regulation clearly set out in the Civil Code of Japan, it is considered that the co-owner of a real right can transfer its share freely. And, each co-owner of a real right may demand the partition of property in co-ownership at any time. 36 When a patent right is regarded as a real right, it is thought that transfer of the share can be performed freely. At this point, it can be thought that Japanese patent law gives priority to the purpose of contributing to development of industry. The Japanese Patent Office explains as follows: When a patent right is jointly owned, no co-owner may assign or establish a right of pledge on the said co-owner's own share without the consent with all other co-owners. 37 This is also the same reason as the case for regulation of licensing. If a third party can exploit a co-owned patent while the other co-owners do not know, then the other co-owners' profits may be injured. So this regulation prepares against such cases. 3.4 Defences against Infringement In the case of a third party's infringement occurring by using a co-owned patent right, the defences do not arise until such an infringement occurs. So its frequency of use is rare. However, when an infringement occurs, the patentee needs to defend himself immediately by issuing a cease and desist letter. A clear regulation does not exist in Japanese patent law, but it is judged in the trial that the right to stop or prevent such infringement can be independently demanded based on the shared right of a co-owned patent. It is because each co-owner is considered to have the right to attain the whole common property. So it should be naturally accepted to grant independently the right of an interference exclusion claim to all co-owners. This is considered to regard a patent 34 Constitution of the United States, Section 8 35 Japan Patent Office (2010), Industrial Property Law of commentary by article (18 th edition), Japan Inst. of Invention and Innovation. 36 Uchida, M. (2008) Minpo Sosoku (The General Provisions of Civil Code) 4th ed. Tokyo: University of Tokyo Press, Article Patent Act of Japan (1959) 特 許 法 Tokkyohō Article 73(1); translation available at

10 right as a real right, because a real right can ask for the exclusion from disturbance of all people. Table 5: Comparison of the difference between a real right and a claim 38 Real right Claim The right to govern a property directly Absolute right A real right can be asserted to all people. Exclusive right Same two or more real rights do not exist The right to ask an obligor for an act Relative right A claim is a right only to an obligor. No exclusive right Same two or more claims may exist. Table 6: The difference of patent law among each country for co-owned patent. Need or Not need of prior consent with other co-owners 39 Country Utilization License to third party Assignment to third party Execution against infringement Japan Not need Need Need Not need US Not need Not need Not need Need United Kingdom Not need Need Need Not need Germany Not need Need Need Not need France Not need* Not need* Not need ** Not need Netherlands Not need Need Not need Not need Belgium Not need Need Not need** Need Switzerland Not need Need Need Not need China Not need Not need Need Need Korea Not need Need Need Not need Taiwan Not need Need Need Not need Bold & italic letters mean the handling co-owned patent as a "claim". * Need to compensate for other co-owners who don't use or grant license. **Co-owners have a right of pre-emption for 3 months from notification of intended assignment. 4. Hypothesis When enterprises enter into a joint R&D, they can make a development agreement with outside partners in order to decide the ownership and the utilization of the patents being created from the joint R&D. As mentioned above, there is a difference of regulation of patent law in each country, so enterprises can avoid the risk of regulation which becomes disadvantageous for enterprises by contracting a special agreement. For example, if the regulation to which it can grant licenses to a third party freely without obtaining co-owners' consent exists in the country, the co-owners of patent can set the provision as the co-owners cannot grant a license of co-owned patent to third party without the other co-owners' prior consent in this agreement. If the co-owners can grant licenses freely to a third party, it becomes an economical risk for the other co-owners in relation to that third party. Although the problem of regulation for co-owned patents in patent law of each country can be resolved by contracting a special agreement, both enterprises need to provide their own input into the adjustment of the contract. 38 Uchida, M. (2008) Minpo Sosoku (The General Provisions of Civil Code) 4th ed. Tokyo: University of Tokyo Press 39 Heath, C. (2007) The status of share patentees in European law translated by Tachibana, I. 16 Intellectual Property Law and Policy Journal 1

11 Therefore, a hypothesis is considered as follows: The more disadvantageous regulation of co-owned patent in patent law for enterprises exists, the less number of joint patent applications is filed to such country s patent office. The wariness of enterprises may be great in countries where disadvantageous regulation exists; however, the wariness of enterprises may not be as great at the beginning of a joint R&D project in a country where disadvantageous regulation do not exist. The difference in patent law of each country influences the activities of enterprises for the joint R&D in such countries and accordingly influences the number of the joint patent application of the enterprises. 5. Methodology and Result In order to verify the hypothesis, the number of the joint patent applications of each country was investigated and compared. The differences among regulation of co-owned patent in patent law of each country can be thought to have some influence on the number of actual joint patent applications. As shown in Table 6, there are differences of regulations of co-owned patent among countries. In order to investigate, each country is divided into groups based on differences of provisions which are advantageous or disadvantageous for enterprises. The investigation was performed by comparing the joint patent application between these groups. Table 7 shows the point added to each country according to its regulation of co-owned patents and then divided each country into a group. The objects of examination are two provisions: License to third party and Assignment to third party. This was chosen as a great influence on the activity of enterprises, and was considered frequently by those enterprises. If the regulation is advantageous for enterprises, 1 point is added to such country. If the regulation is disadvantageous for enterprises, a point is not added to such country. From the enterprises point of view, the advantageous provisions mean that License to third party is required with prior consent of co-owners and Assignment to third party also requires the prior consent of co-owners. Table 8 shows the points for each country according to regulation of each country. The countries having both points of License to third party and Assignment to third party are Japan, United Kingdom, Germany, Korea and Taiwan. These countries are grouped into group 1. Netherlands, Belgium and Switzerland have points for License to third party and are placed into group 2. China has points as to Assignment to third party is placed into group 3. France and US have no points and are placed into the group 4. Table 9 and Table 10 show the number of joint patent application filed to JPO from January February 2009 for the top 30 applicants. These are all Japanese applicants belonging to group 1. It is a well-known fact that the applications to JPO are predominantly Japanese enterprises. However, the joint patent applications of groups 2, 3 and 4 do not exist as a result. As explained in section 3, Japanese patent law has a tendency to recognize a patent right as a real right and the purpose of Japanese patent law is the contribution to the development of industry. Each regulation regarding coowned patents is advantageous to enterprises in Japanese patent law. These enterprises are considered to have obtained merits, such as improvement in self technical capabilities, and shortening of a development period through joint R&D. It is possible to divert the regulation of Japanese patent law by a development agreement with outside partners easily, so it is considered that Japanese patent law supports the practical use of joint R&D.

12 Table 11 shows the number of joint patent application filed with the USTPO from January February 2009 for the top 30 applicants. Table 12 shows a graph of the number of joint patent application summed up for every country group. Group 1 is the highest number of joint patent application. There is a tendency for the joint application number to decrease in Groups 3 and 4. The number of joint patent applications by US native applicants is 53. The total patent applications to USPTO in 2009 were about 456,000, and the application by US native applicants was about 225, Comparing the number of US native application with Japan, it is noticeable that there were fewer in number especially US native applicant's joint patent applications. Many US enterprises have their development headquarters in US, and it is necessary to carry out the first application to USPTO in principle for an invention completed in US regardless the inventor's nationality. 41 So the number of joint patent applications by US enterprise can be considered to be comparatively large, but that is not the situation. One of these factors considered was that US patent law has disadvantageous provisions for enterprises with co-owned patents in regards to the grant of licenses or assignments without the other co-owners prior consent. US patent law tends to treat patent right as a claim rather than a real right. This tendency can be seen from the historical view on patent rights in US. Table 13 shows the number of joint patent application filed with the EPO from January February 2009 for the top 30 applicants. Table 14 shows the graph of the number of joint patent applications summed up for every country group. There was a tendency for the joint application number to decrease as they moved from group 1 to group 4. The number of joint patent applications by European native applicants was 244. This is about 68.9% of all joint patent applications filed with the EPO. The total patent applications filed with the EPO in 2009 was about 135,000, and the application by European native applicants was about 69,000, which was about 51.5%. It can be argued that the scheme of joint R&D is actively utilized in Europe, and there is no tendency for joint patent applications decreasing, as compared with the USPTO and JPO. Interestingly, many of these joint patent applications originate in France. In France, as described in section 3, the co-owners of a patent are required to compensate the other co-owners who do not use or grant licenses when they work the patented inventions. So the joint R&D with a public government office or organization as Centre National de la Recherche Scientifique (CNRS) is carried out briskly. In conclusion, it can be noted that the number of joint patent applications decrease from group1 to group 4 in JPO, USPTO, and EPO, as indicated in Tables 10, 12, and 14. This result suggests that the restrictions of patent law in each country can affect the number of joint patent applications and the frequency of practical use of joint R&D by enterprises. The above-mentioned hypothesis, which is the more disadvantageous regulation of co-owned patent in patent law of country for enterprises exists, the less number of joint patent applications is filed to such country s patent office, is considered to be proved. 40 Japan patent Office (2011), The present condition and the subject of industrial property rights (patent administration annual report 2011 edition), Japan Inst. of Invention and Innovation, Web-site, 41 US patent law, 35 USC. 184, 185

13 Table 7: Points for co-owned patent regulation if advantage for enterprises or not, Need or not need for prior consent with other co-owners. Advantage (Patent right handled as a "real right") Disadvantage (Patent right handled as a "claim") License to third party Assignment to third party Need 1 Point Need 1 Point Not need 0 Point Not need 0 Point Table 8: Grouping country by a point based on Tables 6 & 7. Country License to third party (Point) Assignment to third party (Point) Country Group Japan 1 1 United Kingdom 1 1 Germany 1 1 Group1 Korea 1 1 Taiwan 1 1 Netherlands 1 0 Belgium 1 0 Group2 Switzerland 1 0 China 0 1 Group3 France 0 0 US 0 0 Group4 Table 9: Joint patent application filed to JPO, Top 30 applicant as of Jan-Feb Applicant Country Group Number of joint patent application 1 TOSHIBA CORP Japan Group TOYOTA MOTOR CORP Japan Group SANYO ELECTRIC CO LTD Japan Group TOSHIBA MEDICAL SYSTEMS CORP Japan Group SUMITOMO ELECTRIC IND LTD Japan Group DENSO CORP Japan Group SUMITOMO WIRING SYST LTD Japan Group MITSUBISHI ELECTRIC CORP Japan Group AUTONETWORKS TECHNOLOGIES LTD Japan Group NIPPON TELEGR & TELEPH CORP <NTT> Japan Group HONDA MOTOR CO LTD Japan Group HITACHI LTD Japan Group SANYO CONSUMER ELECTRONICS CO LTD Japan Group TOSHIBA HOME APPLIANCES CORP Japan Group TOSHIBA CONSUMER ELECTRONICS HOLDINGS CORP Japan Group TOYOTA CENTRAL R&D LABS INC Japan Group NIPPON SOKEN INC Japan Group TOHOKU UNIV Japan Group KYORAKU SANGYO KK Japan Group NEC CORP Japan Group NISSAN MOTOR CO LTD Japan Group PANASONIC CORP Japan Group NATIONAL INSTITUTE OF ADVANCED INDUSTRIAL SCIENCE & TECHNOLOGY Japan Group AISIN SEIKI CO LTD Japan Group FURUKAWA ELECTRIC CO LTD THE Japan Group TOKYO INSTITUTE OF TECHNOLOGY Japan Group SEIKO EPSON CORP Japan Group OJI PAPER CO LTD Japan Group SANYO SEMICONDUCTOR CO LTD Japan Group PANASONIC ELECTRIC WORKS CO LTD Japan Group Thomson Innovation (2012) at

14 Japanese Applicant Group1 Group2 Group3 Group4 (Number of joint application) Table 10: Joint patent applications filed to USPTO by country group based on Table 9 Table 11: Joint patent application filed to USPTO, Top 30 applicant as of Jan-Feb Applicant Country Group Number of joint patent application 1 Sony Corporation Japan Group Kabushiki Kaisha Toshiba Japan Group TOSHIBA TEC KABUSHIKI KAISHA Japan Group TOYOTA JIDOSHA KABUSHIKI KAISHA Japan Group Sony Electronics Inc. Japan Group SAMSUNG ELECTRONICS CO. LTD. Korea Group HON HAI PRECISION INDUSTRY CO. LTD. Taiwan Group FIH (HONG KONG) LIMITED Hong Kong Group HYUNDAI MOTOR COMPANY Korea Group ARBESMAN RAY Canada Group Sanyo Electric Co. Ltd. Japan Group KIA MOTORS CORPORATION Korea Group BAXTER INTERNATIONAL INC. US Group DENSO CORPORATION Japan Group Robert Bosch GmbH Germany Group SHENZHEN FUTAIHONG PRECISION INDUSTRY CO. LTD. China Group Tsinghua University China Group HONDA MOTOR CO. LTD. Japan Group International Business Machines Corporation US Group Hitachi Ltd. Japan Group HONG FU JIN PRECISION INDUSTRY (ShenZhen) CO. LTD. China Group The Regents of the University of California US Group Toshiba Medical Systems Corporation Japan Group CREDO TECHNOLOGY CORPORATION US Group NIPPON SOKEN INC. Japan Group Mitsubishi Heavy Industries Ltd. Japan Group Commissariat a l'energie Atomique France Group FUJIFILM Corporation Japan Group Baxter Healthcare S.A. Switzerland Group HEADWAY TECHNOLOGIES INC. US Group NOT American Applicant American Applicant Group1 Group2 Group3 Group4 (Number of joint application) Table 12: Joint patent applications filed to USPTO by country group based on Table Thomson Innovation (2012) at

15 Table 13: Joint patent application filed to EPO, Top 30 applicant as of Jan-Feb Applicant Country Group Number of joint patent application 1 Koninklijke Philips Electronics N.V. Netherlands Group Philips Intellectual Property & Standards GmbH Germany Group F. Hoffmann-La Roche AG China Group Roche Diagnostics GmbH Germany Group Unilever N.V. Netherlands Group Centre National de la Recherche Scientifique (CNRS) France Group Fraunhofer Germany Group Unilever PLC UK Group Commissariat à l'énergie Atomique et aux Énergies Alternatives France Group Kabushiki Kaisha Toshiba Japan Group Mitsubishi Heavy Industries Ltd. Japan Group Services Pétroliers Schlumberger France Group Array Biopharma Inc. US Group Baxter International Inc. US Group Nederlandse Organisatie voor Toegepast Netherlands Group Panasonic Corporation Japan Group Baxter Healthcare SA China Group Koninklijke KPN N.V. Netherlands Group Société de Technologie MICHELIN France Group The High Pressure Gas Safety Institute of Japan Japan Group BASF SE Germany Group FIH (Hong Kong) Limited Hong Kong Group Genentech Inc. US Group IMEC Belgium Group Osaka University Japan Group PRAD Research And Development Limited British Virgin Islands Group Roche Diagnostics GmbH Germany Group SANOFI France Group Schlumberger Holdings Limited British Virgin Islands Group Shenzhen Futaihong Precision Industry Co. Ltd China Group NOT European Applicant European Applicant Group1 Group2 Group3 Group4 Table 14: Joint patent applications filed to EPO by country group based on Table Conclusion (Number of joint application) This paper reviewed the difference in regulations of co-owned patent between a range of countries from the aspect of a real right and a claim. These differences have arisen due to the peculiarity that a patent itself is an immaterial property right. That is, the patent right cannot say clearly whether it is a real right or it is a claim. Because of it, the consideration of co-owned patents differs in each country for reasons due to the purpose of patent law, the view of Civil Code, and the background of its historical legal system. This research pointed out the differences of regulation of co-owned patents can influence the practical use of joint R&D by enterprises in each country. In the countries which treat co-owned patents as a real right, the regulation prohibits the license to a third party and the assignment of a share of a patent to a third party if the co-owners' consent is not obtained, unless otherwise agreed upon by contract among the co-owners. It is based on the character of a real right, as two or more real rights 44 Thomson Innovation (2012) at

16 cannot exist in the same thing (exclusivity). For enterprises, the risk of the co-owned patent utilized by third parties, suddenly or not knowing, should decrease, if the need for consent from the other co-owners against such activities. With the background of such regulation of law, enterprises can build good and confidential relationships with outside partners in joint R&D comparatively easily. On the other hand, in the countries which treat co-owned patents as a claim, the regulation allows the license to a third party or the assignment of a share patent to a third party even if the other co-owners' consent is not obtained, unless otherwise agreed upon by contract among the co-owners. It is based on the character of a claim, as two or more real rights can exist on the same thing (no exclusivity). For enterprises, the risk of the co-owned patent utilized by third parties, suddenly or not knowing, should increase. With the background of such regulation of law, it is considered to be difficult for enterprises to build a relationship with outside partners in joint R&D comparatively. Moreover, in this research, through the analysis of joint patent applications among Japan, US and Europe, it was pointed out that there is a difference in the situation of joint patent applications according to the countries which treat co-owned patents as a real right or a claim. That is, the joint patent applications of the countries which treat co-owned patent as a real right are filed with each patent office. It implies that the enterprises in such countries utilize the joint R&D scheme actively. In Japan, United Kingdom, Germany, it was seen the tendency for treating co-owned patents as a real right. On the contrary, the joint patent application of the countries which treat coowned patent as a claim is not filed so actively. It is reasoned that to hold a co-owned patent is awkward and difficult so there is hesitation to file joint patent applications. Although it is possible to contract a joint developing agreement in order to avoid such problems, the existence of such regulation itself seems to influence the practical use of joint R&D. In US and France, it was seen that the tendency was for treating co-owned patents as claims. As technology becomes more highly developed and the development period of next generation products shortens drastically, so it becomes more difficult for enterprises to prepare all of the technology required independently. Joint R&D with outside partners is one way to develop open innovation which can solve these issues and can improve technical capabilities. Enterprises should manage their joint R&D effectively with the understanding of the differences and features of various legal backgrounds of their outside partner s countries. References [1] Selvam, Jesiah (2010) Response of Higher Education to Globalisation Empirical Evidences from India, 12 Journal of Social and Economic Development 2. [2] Shin, J. & Harman, G. (2009) New Challenges for Higher Education: Global Perspectives, 10 Asia Pacific Educ Rev 1. [3] UNESCO (2012) New Patterns in Student Mobility in the Southern Africa Development Community, United Nations Educational, Scientific and Cultural Organization. [4] Guruz, K. (2008) Higher Education and International Student Mobility in the Global Knowledge Economy, Albany, NY: SUNY Press. [5] Rizvi, F. (2004) Globalisation and the Dilemmas of Australian Higher Education, 23 Critical Perspectives on Communication, Cultural and Policy Studies 33. [6] Hudzik, John (2011) Comprehensive Internationalisation: From Concept to Action, NAFSA: Association of International Educators.

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