Home > Topics > Putting Intellectual Property to Work: Experiences from Around the World > Current Issues of IP Management for Health and Agriculture in Japan > Editor's Summary, Implications and Best Practices

Over the last decade, the establishment of technology transfer offices (TTOs) at national universities and public research institutions has led to a boom in public-sector collaboration with industry in Japan. The boom was created and catalyzed by reforms of the TTO laws and the “Japanese Bayh-Dole Act.” National academic institutions have also gained autonomy in IP management and the ownership of IP rights, which has made them the source of an increasing number of spinout companies that utilize their technologies. However, national academic institutions continue to lack human resources in IP management and technology transfer, especially multi-skilled specialists with the necessary legal and technical knowledge.

In addition to providing an historical overview of Japan and IP, this chapter explains Japan’s current approach and the rationale underlying it. Part of what is happening in Japan is that an increasing number of institutions have established regulations and rules about employees’ inventions that include allocating patent rights and paying remuneration to their employees for inventions. These trends have facilitated effective institutional IP management, technology transfer through collaboration with other institutions and licensing, and have given additional incentives to employees to create new innovations.

These trends are also putting pressure on IP law. Unlike in the U.S. and EU, medical methods cannot be patented under Japan’s patent law. The reasons for this are largely humanitarian, but there is also the general perception that medical activities are non-profit and that the public sector conducts and funds innovation in the medical field. Given the recent changes that have led to spinouts assuming an increased role, pressure to amend the laws has been building. Despite the original intention of the patent law, many argue that a proscription against patenting medical methods could actually reduce patients’ access to new and innovative advances. Thus, whether process patents in the medical field should cover methods is still widely argued, and this chapter details the terms of this debate and Japan’s efforts to resolve the issue. The exemption of experimental use from patent infringement is also hotly contested in Japan, and the chapter explains the thinking behind current interpretations of this aspect of Japan’s IP law.

Japan has been very engaged, in both the public and private sectors, in agricultural biotechnology R&D since the 1980s. Due to the wide patent coverage of biotechnology products and processes under Japanese law, the risk of inadvertent patent infringement is rising and judicial procedures are becoming more costly and time consuming. Despite these challenges, policy reforms have made biotechnology a national priority area since 2002. Indeed, Japan has established several key bioresource centers and genebanks that are promoted (or principally funded) by public institutions and agencies.

Still and all, while basic R&D has contributed to global plant biotechnology communities, Japan has not taken the leadership in business development of agri-biotechnology. Furthermore, even though academic publications are recognized within global R&D networks, Japan’s national policy lacks a strategic vision in the area of technology communication. Investors see agri-biotech companies as a high risk; their long-term efforts and contribution have been stagnant. Major venture capitalists or investment banks are less likely to fund Japanese plant biotechnology R&D in comparison to other areas.

The chapter concludes with an overview and analysis of one of these institutions: the RIKEN (The Institute of Physical and Chemical Research). Over the last decade, RIKEN has made a great effort to promote IP strategy and consequently to become more financially independent. Nevertheless, there remain some issues that need to be addressed to improve the efficiency of RIKEN’s IP management. One of these is to create more practical inventions that can be rapidly commercialized and directly enter the market. In order to achieve this goal, RIKEN has carefully selected research topics and fields that potentially create more practical inventions and give consideration to the balance of funding to basic versus applied research. However, the administrative personnel employed by RIKEN tend to lack specific expertise in IP management due to the frequent rotation of personnel through the institute. Consequently, RIKEN’s IP management is very dependent on outsourcing, in particular for the Patent Liaison and Coordinator positions.

Japan’s IP system and management is in some ways unique in relation to the health and agricultural sectors. IP rights for health care have been recognized as publicly shared knowledge and skills with equitable properties rather than personalized trade secrets or proprietary knowledge and skills, although some incentives have been furnished to enable the sharing and development of individual invention and know-how. Overall, the stakeholders in health and agriculture will recognize intellectual property increasingly in Japan. Diverse ways of adapting IP protection are being considered, and a sui generis approach may be adopted to tackle many subjects. Public awareness is likely to be promoted through public engagement in IP management, particularly in health and agriculture.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policy-makers

• It is essential to establish an appropriate national legal framework to improve IP systems and to promote partnership between academia and industry. Appropriately adopting international standards for harmonization of IP law also requires adapting an IP system so that is congruent with national levels of development and in accordance with local economic, industrial and technological sophistication.
• It is critical to adapt infrastructure with sufficient capacity to enable the IP systems and the framework to work together effectively, such as a proper bureau or department under the government and the appropriate number of IP examiners.
• It is essential for the government to provide technical and financial support to various players - senior managers, technology transfer officers and scientific researchers in public sector, and also the private sector. The support will enable creation of capacity and incentives institutionally and individually to promote IP rights and their commercialization in the country.
• The government ought to recognize the importance of IP rights, IP management and technology transfer for national development and the nation’s long term welfare. To implement this, there ought to be an initiative to form a stable national IP policy and a strategy and to make it effective.

For Senior Management (university president, R&D manager, etc)

• Take the initiative to improve institutional management systems in order to promote IP rights and enhance technology transfer from (and to) the private sector. This initiative will include establishment of IP rules and programs in the institute and serious investment in institutional and human IP capacity building.

For Scientists

• Attend internal or external workshops/seminars to raise IP awareness and obtain knowledge and skills in IP related issues (such as best practices in IP management).
• Understand international, national and institutional IP systems and collaborate with the technology transfer (or other relevant) offices for effective IP application and commercialization of inventions.

For Technology Transfer Officers

• Establish institutional programs to promote IP awareness, management and application and also issues relating to commercialization of scientists’ inventions. The programs can be effective by providing incentives for scientists to participate.
• It would be very useful for scientists to receive information from the technology transfer office (TTO) through workshops/seminars and documents. The TTO can organize workshops/seminars internally and also encourage scientists to attend external workshops/seminars. They will be conducive for enhancing, not only IP awareness, but also understanding of IP systems, programs and management.
• Adequate institutional and human resources are necessary in order to develop adequate technical and legal knowledge and skills. This, in turn, will create the requisite institutional capacity for identifying patentable inventions and knowing what procedures need to be followed in order to move innovations along the value chain towards development and commercialization.