contents · 2019-03-27 · introduction ... changes in the patent licensi ng framework in the...
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CONTENTS
Page
1. Introduction ................................................................................................................................................................1
2. Changes in the Patent Licensing Framework in Europe and the United States................................................3
1) Changes in the Patent Licensing Framework in the United States ................................................................3
2) Changes in the Patent Licensing Framework in Europe.................................................................................4
3. Legal Framework for Patent Licensing in Japan...................................................................................................5
1) Formulation of the Basic Policies for Promoting Science and Technology and Intellectual Property......5
2) Regulatory Environment in the University Sector...........................................................................................6
3) Regulations Aimed at Industrial Revitalization ................................................................................................7
4) Patent Licensing....................................................................................................................................................7
4. Measures Encouraging Patent Licensing...............................................................................................................8
1) Supplying Human Resources to Support Patent Licensing............................................................................8
2) Providing Information on Issued Patents...........................................................................................................9
3) Supporting Intellectual Property Trading ..........................................................................................................9
4) Agreements Concluded under the Measures Encouraging Patent Licensing...............................................9
5) Breakdown of Agreements Concluded under the Measures Encouraging Patent Licensing by Type of
Contract................................................................................................................................................................ 10
6) Technical Fields of Concluded Agreements....................................................................................................11
7) Flow of Patents Distributed under Concluded Agreements......................................................................... 12
8) Geographical Relationship of Licensor and Licensee .................................................................................. 12
9) Economic Impact of the Measures Encouraging Patent Licensing............................................................ 13
5. Current Status of Small and Medium-sized Enterprises in the Context of Patent Licensing....................... 14
1) SMEs’ Technology Needs................................................................................................................................ 14
2) Private Sector Experience in Technology Transfer....................................................................................... 14
3) Challenges faced by SMEs in Patent Licensing............................................................................................ 15
4) Technical Fields in which SMEs have Technology Needs.......................................................................... 15
5) Factors that Prompted SMEs to become Involved in Patent Licensing..................................................... 16
6) Factors Preventing the Conclusion of Agreements....................................................................................... 17
7) Specific Support Needs of SMEs regarding Patent Licensing.................................................................... 18
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6. Current Status of Regional Support Available for Patent Licensing................................................................ 20
1) Supporting Patent Licensing Advisors by Providing Access to Corporate Information.......................... 20
2) Municipal Government Referral Service connecting Companies with Patent Licensing Advisors ...... 20
3) Publicizing Patent Licensing Activities by Municipal Governments......................................................... 20
4) Support for Patent Licensing through Local Authorities’ Briefing Sessions and E-Mail Newsletters and
Expert Advice...................................................................................................................................................... 20
5) Patent Information Provision at the Regional Level..................................................................................... 21
6) Cooperation between Municipal Governments and Patent Licensing Advisors ...................................... 21
7. Measures Encouraging Patent Licensing in Regions ........................................................................................ 22
1) Activities of Patent Licensing Advisors.......................................................................................................... 22
2) A Day in the Life of a Patent Licensing Advisor........................................................................................... 25
3) Sources of Information on Companies........................................................................................................... 25
4) Company Visits.................................................................................................................................................. 26
5) Understanding and Deepening of Needs........................................................................................................ 28
6) Selection of Seeds.............................................................................................................................................. 30
7) Referral of Seeds................................................................................................................................................ 30
8) Matching............................................................................................................................................................. 31
9) Support for Contract Negotiation .................................................................................................................... 32
8. Encouraging Patent Licensing Supports for TLOs............................................................................................ 34
1) Patent Licensing Advisor (AD) supports for TLOs...................................................................................... 34
2) Visit to Laboratories........................................................................................................................................... 36
3) Search for Patents............................................................................................................................................... 38
4) Evaluation of Invention..................................................................................................................................... 40
5) Preparing Seed Introductory Materials........................................................................................................... 41
6) Visit to Companies............................................................................................................................................. 41
7) Introduction of Seeds and Understanding of Needs...................................................................................... 42
8) Support of Contract Negotiation...................................................................................................................... 43
9. Best Practices for Exploiting Patent Licensing................................................................................................... 46
1) Best Practices for Exploiting Patent Licensing by Region-based ADs...................................................... 46
2) Best Practices for the Exploitation of Patent Licensing by TLO-based ADs............................................ 47
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10. Analysis of the Result of Exploiting Patent Licensing Service...................................................................... 49
1) Percentage of Seeds Completion..................................................................................................................... 49
2) Business Fields in Which Contracted Seeds have been Applied ................................................................ 49
3) Actual State of Granting Rights to Exploited Seeds...................................................................................... 50
4) Acquisition of Distribution Channels at the Conclusion of a Contract....................................................... 51
5) Actual State of Contracted Seeds..................................................................................................................... 51
6) Issues after the Conclusion of a Contract........................................................................................................ 52
References.................................................................................................................................................................... 54
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1. Introduction
The history of mankind is a history of the evolution of civilizations that rise and decline in accordance with
their use of innovative technologies. These technologies, in fields such as metal refining, agriculture,
mechanics, energy, electricity, electronics, information and so on, have put power into the hands of different
groups at different times and resulted in the rise of civilizations that gradually spread to surrounding areas,
changing the way people lived. It can safely be said that the history of our species is the story of the
repetition of this cycle. Given, however, that innovative technologies tend to be lucrative for those who
control them, there has been an ongoing battle since the dawn of mankind between those who would
monopolize technologies and those who would share.
During the Edo Era in Japan, disclosing unique and secret technologies owned by other clans was a
punishable offence. As these examples show, human beings all over the world have sought to maintain
exclusive control over lucrative technologies and have been willing to mete out harsh punishments to
anyone who threatened their monopoly.
This situation only changed with the introduction of two systems known as the patent registration
system and the patent licensing system. With these two systems, the transfer of a technology from its owner
to those who would use it has been transformed from a win-lose situation, wherein the party who acquired
the technology enjoyed a great benefit while the owner suffered a loss, to a win-win arrangement under
which both parties benefit.
These two systems already existed in Great Britain when James Watt invented the steam engine. It
is said that Watt received patent royalty payments equivalent to approximately one-third of the savings that
resulted from use of his engine, according to its wattage rating. This demonstrates that the cycle of creation,
protection and application of technologies was already functioning at that time. The extension of this cycle
helped bring about the Industrial Revolution. However, it did not necessarily continue to provide
lubrication for the engine that drove the United Kingdom and other countries after this time.
Shortly after the Industrial Revolution ended, the United Kingdom moved back to a monopolistic
position in order to maintain the technological lead it had established, lest technical information and
engineers slip through its borders.
It wasn’t until the 20th century that the United Kingdom became the focus of global attention when
it committed itself to the two systems of patent registration and patent licensing. This was at least partially
the result of the United Kingdom having to pay the United States large amounts in royalties to produce
penicillin: even though Alexander Fleming had discovered the drug in the United Kingdom, he did not
apply for a patent on the discovery. In 1948, the United Kingdom established the Development of
Inventions Act and announced a policy under which patent licensing would receive more attention by way
of the new National Research and Development Corporation established the following year. (The NRDC
was later privatized. Under the name BTG International, it is now the world’s leading patent licensing
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company.)
Toward the end of the 20th century, a new trend emerged in the United States whereby industry was
promoted by concerted efforts involving the private, public and university sectors to vitalize of the cycle of
intellectual creativity. This trend later spread to Japan and Western Europe, including the United Kingdom.
At the enterprise level, the product cycle became shorter every year as global competition increased
and product development periods were also under pressure. This meant companies could no longer rely on
conventional commercialization practices involving basic in-house research, applied research and market
research, and came to employ a style that draws heavily on technology transfer. Now that corporations,
governments and community-based organizations from the world’s leading industrialized countries are
promoting cooperation on regional, national and international levels, new challenges in revitalizing the
cycle of intellectual creativity to meet grass-roots needs must be addressed.
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2. Changes in the Patent Licensing Framework in Europe and the United States 1) Changes in the Patent Licensing Framework in the United States１）
This section will examine the background behind the adoption of pro-patent policy by the United States, i.e. the revitalization policy employed by the U.S. to strengthen the cycle of intellectual creativity and its results.
In late 1960s, the competitiveness of the U.S. economy, which had been a consistent driver of the global economy during the post-World War II era, came under a cloud, partly because Japan and Europe were both threatening to catch up, but also due to the impact of the Vietnam War. In the 1970s, the bottom continued to fall out, owing to two oil crises and the phenomenon known as stagflation. The Young Report speculated that the deterioration of competitiveness could be accounted for by the fact that high levels of technology owned by U.S. companies were not reflected in the development and competitiveness of trade goods and that intellectual property rights were not appropriately protected in the United States.
The Bayh-Dole Act of 1980, which clearly articulated the United State’s patent policy, played an extraordinary role in changing the situation. Under the law, patent rights to an invention developed under government-subsidized research and development projects became vested not in the nation as a whole but in the university or company that created the invention. In addition, any patent obtained based on that right could be licensed. The enactment of this law made nearly half of the country’s research expenditure (including national defense expenditure) available to support the creation of useful intellectual properties in a range of fields such as information technology, biotechnology and so on. Technology transfer organizations (TTOs, similar to the Japanese Technology Licensing Organizations, or TLOs) were set up at many universities and venture companies were launched. Industry-university-government cooperation was advanced and the U.S. economy reaped the benefits. In addition, the United States conducted structural improvements to boost the creation, protection and utilization of knowledge, which constitutes the cycle of intellectual creativity.
More specifically, for the purpose of promoting knowledge creation, the U.S. Congress established the Small Business Innovation Development Act in 1982, which provided financial support for feasibility studies and R&D projects for ideas proposed by small and medium-sized enterprises. It also created the Advanced Technologies Program in 1988, a program led by the private sector to promote technological innovation by providing seed money to cover fund shortages involved in the commercialization of new technologies. These two acts further enhanced the competitiveness of U.S. corporations. Congress then instituted the Cooperative Research and Development Agreement (CRADA), a joint development program to promote joint public-private sector research projects undertaken by national laboratories and private companies.
In 1980, the United States went on to establish the Stevenson-Wydler Technology Innovation Act, which required the transfer of the fruits of federal research projects to the private sector, and, in 1992, the
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Small Business Technology Transfer Act to promote the transfer of technology. The latter in particular is thought by many to have been instrumental to the launch of venture companies at university campuses such as Sun Microsystems and Dell Computer.
2) Changes in the Patent Licensing Framework in Europe２）
In the United Kingdom, the creation of the Development of Inventions Act in 1948 and National Research and Development Corporation in the following year established a scheme that strengthened support for the development of inventions and encouraged the pursuit of patents rights and licensing. The scheme was maintained until 1985, when the NRDC was renamed the British Technology Group. Under the new scheme, however, the organization continued its role of facilitating the transfer and commercialization of research products from university and publicly funded research laboratories.
Following the 1985 changes, TTOs began to be established at universities. By 2003, 80% of all universities in the United Kingdom had a TTO in place marking the first step toward nationwide industry-university-government cooperation.
The U.K. government also undertook the task of revitalizing the cycle of intellectual creativity on a national level by formulating a research/technology/innovation policy focused on industry and by supporting technology transfer at universities to promote the creation and protection of knowledge.
In Germany, public institutions such as Max-Planck-Institut and Fraunhofer-Gesellschaft have undertaken the dual tasks of R&D and technology licensing since 1970s. The Scientific Project was created in the early 1980s to promote technology transfer. In the 1990s, measures to promote industry-university cooperation and nurture venture companies were taken following reunification.
Individual German provinces currently develop their own projects, and many having a TTO in place. Since the amendment of the Employees’ Invention Act in 2002, all provinces have established a patent evaluation and technology licensing organization at each university within their borders.
In France, a national policy for government-led scientific and technological development has been adopted. As in the case of Japan, French public institutions receive resources to be used in the promotion of industry-government cooperation.
Although industry-government cooperation in France was considered to be less advanced than in other European countries, with only a few examples of successful commercialization of research products, the Innovation Act of 1999 bringing with it the inauguration of a nationwide business planning competition, formation of incubators, and financial support packages- has intensified industry-government cooperation and the number of new start-ups is on the increase.
At the regional level, local innovation and technology licensing centers are in place to speed up technology transfer to small and medium-sized enterprises.
Most French research institutions are now statutory bodies affiliated with an organization to promote the licensing of technology and its practical realization.
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principles for applying research results for society at large. As a specific target for technological
innovation, it defined four top priority fields (life sciences, information and communications,
environment, nanotechnology and material science) and four second-tier priority fields (energy,
manufacturing techniques, infrastructure, frontier).
In 2002, the Basic Law on Intellectual Property came into operation. Closely connected with the
Basic Law on Science and Technology, this law formed the backbone of Japan’s efforts to bring science
and technology to the fore.
The law set out the responsibilities of the state, local authorities, universities and the private sector
concerning the creation, protection and utilization of intellectual property, in other words, the
revitalization of the cycle of intellectual creativity. Specifically, local authorities, along with the national
government, would be called upon to develop and implement measures aimed at creating, protecting
and utilizing intellectual property. Universities, in addition to their traditional roles in education and
research, would ensure the products of research found their way into society. The private sector,
meanwhile, would be expected to actively utilize and properly manage intellectual property.
Furthermore, the law provided measures to strengthen industry-government-university cooperation,
protect intellectual property and promote technology transfer.
2) Regulatory Environment in the University Sector
The Law for Promoting University-Industry Technology Transfer as put into operation in 1998 sets
out principles for the transfer of research products from universities and national research institutions via
Technology Licensing Organizations (TLOs). Under the law, a large number of TLOs (51 as of July 1,
2008) were established and a wide range of facilities became available. The law also includes provisions
relating to government subsidies, reductions or exemptions for annual patent fees, free use of college
facilities, and made it possible for an instructor at a national university to simultaneously hold the
position of director at a TLO, thus paving the way for the transfer to the private sector of worthy
inventions developed on campus.
The University Intellectual Property Headquaters Development Project, launched in fiscal 2003,
advanced the development of basic rules concerning intellectual property created and owned by
universities, and included regulations regarding ownership of inventions (such as by stipulating that
ownership of intellectual property, such as a patent, be attributed to the institution employing the
inventor) and policies regarding industry-university-government cooperation, management of
intellectual property, conflict of interest, invention security, collaborative research and funded research.
The transformation of national universities into independent administrative institutions, which
occurred in April 2004, put pressure on universities to undertake research with practical real-world
applications and gave them more leeway to invest in projects that utilized such research.
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The reclassification of university office-holders from public to private employees released them
from the restrictions placed on civil servants that had prevented them from simultaneously holding
private sector positions, thereby facilitating implementation of technology transfer and industry-
university cooperation.
3) Regulations Aimed at Industrial Revitalization
Article 30 of the Act on Special Measure for Industrial Revitalization, a Japanese version of the
Bayh-Dole Act, provides that intellectual property rights resulting from government-funded research
undertaken by the university and private sectors are attributable in whole to the research organization.
Until this law, such rights had been, in principle, fully attributed to the state.
In real terms this meant that public funding, which, as of 1999, accounted for 21.9% of Japan’s
total research expenditure, became available for the development of innovative technologies to support
business.
Similarly, under the Small Business Innovation Research Program, a Japanese version of SBIR
launched in 1999, various government ministries and agencies provide integrated support in the form of
subsidies for small and medium-sized enterprises in both the R&D (including for feasibility studies and
market development) and commercialization phases.
4) Patent Licensing
In 1985, the then Ministry of International Trade and Industry established the Japan Technomart
Foundation, with the Japan Industrial Location Center as its base. Japan Technomart assembled and
operated a database of technology seeds for transfer between member companies. As it was unable to
increase the number of member companies, however, its activities and transfers were limited.
Against this backdrop, the Japan Patent Office began a patent licensing promotion project in
1997. The central aim of this project was to create a corps of patent licensing advisors (ADs) who would
be dispatched to local authorities (and TLOs, in the following years) to help local businesses acquire or
license patents owned by other private companies or universities, thereby creating new business
opportunities and enabling new product development by SMEs and venture companies. The project
produced good results, brokering more than 10,000 agreements, and is still in operation now. The
following section will describe the details of this project.
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4. Measures Encouraging Patent Licensing
The Measures Encouraging Patent Licensing is run by the National Center for Industrial Property
Information and Training (INPIT). It focuses on the three areas shown in Fig. 4-1: supplying human
resources to support patent licensing; providing information on issued patents; and supporting intellectual
property trade in the private sector.
Fig. 4-1 Measures Encouraging Patent Licensing３）
1) Supplying Human Resources to Support Patent Licensing３）
Patent licensing relies on negotiations based on trust and the ability to examine potential deals for
successful outcomes. Therefore, human factors have a decisive influence on the end figures. Starting
with 14 ADs in 1997, the project now has approximately 110 in place, about 70 of which work with
regional Bureaus of Economy, Trade and Industry and local authorities. Their work mainly consists of
matching entrepreneurs possessing technology needs with technology seeds developed by the private
and university sectors; providing support for the conclusion of agreements; and providing training and
support to personnel engaged in patent licensing; and to patent licensing assistant advisors who will go on to
be directly employed by local authorities.
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2) Providing Information on Issued Patents３）
The Industrial Property Digital Library (IPDL) is a national patent database reported to contain
approximately one million pieces of patent-related data. Although the database can be accessed by
private companies at no cost, many SMEs lack familiarity with the processes involved in accessing and
utilizing patent information. To counter this, specialist consultants assigned to local authorities (54 in
number, as of fiscal 2008) provide local SMEs with advice on a wide variety of matters, including
instructions on how to use the IPDL, what they need to know in order to retrieve patent information and
how they can use the information once retrieved.
Another resource available is the Patent Licensing Database, which contains around 58,000 pieces
of data and is designed to be updated on a sequential basis.
3) Supporting Intellectual Property Trading３）
Revitalizing the cycle of intellectual creativity at the grassroots level in Japan depends not only on
the creation and protection of intellectual property but also on ensuring that private-sector trade in of
intellectual property rights in various fields is properly supported, a need that is yet widely recognized.
A database of private-sector traders engaged in patent licensing and intellectual property rights
trading was created and placed on the Internet for public access to help meet this need.
Among its other activities, INPIT provides professional development training courses and seminars
for patent traders covering issues related to both domestic and international patent trading, inviting
international guests working in the field of international property rights trading to speak at the latter.
These events are also designed to promote the development of professional networks and a greater
exchange of information between participants. In addition, INPIT provides opportunities for private
companies to present their business plans to help companies that need specific technologies find other
companies who have them. It also supports patent-related trade fairs held in various regions in Japan to
support network-building.
The following subsections give an overview of the outcomes of the project, based on the section of
INPIT’s website titled, “Measures for encouraging patent licensing.”
4) Agreements Concluded under the Measures Encouraging Patent Licensing４）
Fig. 4-2 shows the numbers of agreements signed (on both single-year and cumulative bases)
under the Measures Encouraging Patent Licensing and the number of ADs. The project started in fiscal
1997 with 14 ADs and brokered six deals in the first year. While the number of ADs peaked at
approximately 110, the number of agreements concluded continued to increase each year, breaking the
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10,000 mark in fiscal 2007, when it reached a cumulative total of 10,672.
The number of deals made per year peaked at 2,024 in fiscal 2005 and began to take a downward
fall thereafter. This may reflect the shift in emphasis from quantity to quality (with a higher priority put
on contracts with more meaningful outcomes, such as license agreements) that occurred as the project
completed its initial awareness-raising phase and entered the diffusion phase.
Fig. 4-2 The Number of Agreements Concluded under the Measures Encouraging Patent Licensing４)）
6 6 43 49130 179
409 588890
1,478
1,223
2,701
1,379
4,080
1,381
5,461
2,024
7,485
1,771
9,256
1,416
10,672
305
10,977
0
2,000
4,000
6,000
8,000
10,000
12,000
Cum
ula
tive
tota
l
1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008
Fiscal year
5) Breakdown of Agreements Concluded under the Measures Encouraging Patent Licensing Type of
Contract４）
Fig. 4-3 shows a breakdown of deals successfully brokered under the project by type of contract.
Licensing agreements, the main target of the project, combined with patent rights assignment contracts,
account for the largest share at 38%. Basic nondisclosure agreements come in at 31%, with the
remaining 31% made up of various other types of agreements.
The conclusion of a nondisclosure agreement serves as the starting point for negotiations that may
result in the execution of a joint research agreement, license agreement or assignment agreement by
allowing one party access to the confidential information of the other party for review.
Under an optional agreement, the parties agree on a specific fixed period of time in which to
conduct testing and experiments, research and development, trial manufacture, and feasibility studies to
identify the commercial potential of the subject technology. At the time of expiry of the term under the
agreement, the parties enter into new negotiations to determine the next steps in the process of
introducing the technology.
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Fig. 4-3 Breakdown of Agreements Concluded under the Measures Encouraging Patent Licensing by Type of
Contract４）
Assignment ofpatent right
(6%)
Joint researchagreement
(11%)
Optionalagreement (7%)
Technicalassistance
agreement (4%)
Contract forsupply of partsand/or finishedproducts (1%)
Others (9%)
Nondisclosureagreement
(31%)
Licensingagreement
(32%)
6) Technical Fields of Concluded Agreements４）
Fig. 4-4 gives a breakdown of the different technical fields of the agreements made under the project.
The six fields that account for relatively large shares are food products and biotechnology (18%),
machinery and processing (17%), chemicals (13%), electric machinery and electronics (13%), lifestyle
and culture (12%) and civil engineering and construction (11%.) This suggests that there is greater
demand in these fields and thus more business opportunities. Contrary to the popular prediction that
information and communications, inclusive of IT, would account for the lion’s share of successful deals,
the actual figure was 4%.
Fig. 4-4 Technical Fields of Concluded Agreements４）
機械・加工, 17%
化学・薬品, 1
食品・バイオ, 18%電気・電子, 13%
土木・建築, 11%
勇気材料, 2%
繊維・紙, 2%
金属材料, 3%
情報・通信, 4%
生活・文化, 12%
輸送, 1%
無機材料, 2%
その他, 1%
Machinery and Processing (17%)
Chemicals (13%)
Electric Machineryand Electronics (13%)
Food Productsand Biotechnology (18%)
Lifestyle and Culture (12%)
Civil Engineeringand Construction (11%)
Information and Communications (4%)
Metals (3%)
Textiles and Paper (2%)
Organic materials (2%) Inorganic materials (2%)Transportation (1%)
Others (1%)
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7）Flow of Patents Distributed under Concluded Agreements
Table 4-1 gives an overview of the flow of patents distributed under signed agreements in terms of
their quantity and six classifications of licensor and licensee, namely, large company, SME, national or
prefectural laboratory, TLO, guild or association, and individual (in the capacity of chief executive).
(Figures in the table were derived from a survey of 6,927 deals made in the eight years from the project’s
start in 1997 to the end of 2005. These included nondisclosure and higher-tier agreements.)
The greatest number of patent transfers (1,879) was between SMEs as both licensor and licensee,
which reflects the particular focus of patent licensing advisors on SMEs. The emphasis placed by the
Measures Encouraging Patent Licensing on SMEs can be explained by the fact that large corporations
typically have an in-house organization staffed by dedicated personnel for the management of
intellectual property and therefore have less need for support. The second and the third largest number of
patent licensings, involving 1,813 and 1,221 deals, respectively, was from TLOs to SMEs and TLOs to
large companies, respectively.
Table 4-1 Flow of Patents Distributed under Concluded Agreements
6,927695403,1005202,310262total
144441218637Personal
911101815452Guild and association
17201275TLO
7361265332National and Prefectural
Lab.
4,913580301,8133961,879215SME
1,6895281,2219428331Large
Company
totalPersonalGuild and associationTLO
National and Prefectural
Lab.SME
LargeCompany
6,927695403,1005202,310262total
144441218637Personal
911101815452Guild and association
17201275TLO
7361265332National and Prefectural
Lab.
4,913580301,8133961,879215SME
1,6895281,2219428331Large
Company
totalPersonalGuild and associationTLO
National and Prefectural
Lab.SME
LargeCompany
8）Geographical Relationship of Licensor and Licensee４）
Fig. 4-5 shows the geographical relationships between licensors and licensees who concluded agreements. Specifically it shows the proportion of deals in which the parties were located in the same or different prefectures. As can be seen from the chart, the proportion of deals in which the parties were based in different prefectures (60%) was one and a half times that of deals in which the parties were located in the same prefecture (40%). This implies that needed technologies can be more easily located by national rather than local searches, indicating the importance of conducting them.
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Fig. 4-5 Geographical Relationships of Licensor and Licensee４）
都道府県内, 41%
都道府県外, 59%
9）Economic Impact of the Measures Encouraging Patent Licensing４）
Fig. 4-6 shows economic impact of the 10,297 deals made under the Measures Encouraging Patent Licensing from 1997, the year in which it was started, until the end of 2007 and changes in costs incurred by the project, both on a cumulative basis.
The impact of the project in economic terms totaled 267.4 billion yen for the period, which amounts to a return of about eight and a half times the project’s cost (31.5 billion yen) for the same period.
“Economic impact” here refers to the amount of money transferred as a result of AD activities, not including project costs. Specifically, it includes sales of products manufactured using transferred technologies, capital expenditure for the production of these products, license fee revenues and recruiting costs. (Source: “Economic impacts and working expenses of measures for encouraging patent licensing” on INPIT’s website)
Fig. 4-6 Economic Impact and Costs of the Project４）
億円
500億円
1,000億円
1,500億円
2,000億円
2,500億円
3,000億円
経済的インパクト 15億円 142億円 258億円 462億円 1,175億 1,578億 2,045億 2,404億 2,674億
事業費 33億円 58億円 96億円 134億円 173億円 214億円 254億円 286億円 315億円
1997-
1999
1997-
2000
1997-
2001
1997-
2002
1997-
2003
1997-
2004
1997-
2005
1997-
2006
1997-
2007
The same prefecture (41%)
Different prefectures (59%)
300 bil. yen
250 bil. yen
200 bil. yen
150 bil. yen
50 bil. yen
0 bil. yen
Economic impact (in bil. yen) 1.5 14.2 25.8 46.2 117.5 157.8 204.5 267.4 267.4Costs of the project (in bil. yen) 3.3 5.8 9.6 13.4 17.3 21.4 25.4 28.6 31.5
100 bil. yen
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5. Current Status of Small and Medium-sized Enterprises in the Context of Patent Licensing
This section will examine the current status of SMEs as leading players in patent licensing based on
survey results.
1) SMEs’ Technology Needs
Fig. 5-1 shows the results of a survey of SMEs asking for their own assessment of technology needs
(that is, the need for patent rights). The survey revealed that an overwhelming majority of 80% think
“technology introduction is necessary” while only 13.6% think “technology introduction is
unnecessary”.
Fig. 5-1 SMEs’ Technology Needs５）
その他, 4.4%
不明, 2.0%
技術導入は必要,80.0%
技術導入は不必
要, 13.6%
（回答：331社）
2) Private Sector Experience in Technology Transfer
Fig. 5-2 shows the results of a survey on the experience private sector enterprises have in patent
licensing (technology transfer). It reveals a broad difference in between large companies and SMEs, with
88.7% of large companies reporting they had experience, while 68.4% of SMEs reporting no
experience. This means that although 80% of SMEs say they need new technologies, as shown in Fig. 5-
1, only 27.5% have actually engaged in technology transfer. Reasons for this will be discussed in the
following subsection, “Challenges faced by SMEs in Patent Licensing.”
Fig. 5-2 Private Sector Experience in Technology Transfer５）
あり,88.7%
分からない
不明
なし,7.7%
大企業（168社）
あり,27.5%
不明,1.0%
分からない,3.1%
なし,68.4%
中小企業（661社）
Not clear (2.0%)Others (4.4%) Technology introduction
is unnecessary (13.6%)
Technology introduction is necessary (80.0%)
Answered by 661 companies
Not clear Not clearUnknown
Not experienced（7.7％）
Experienced（88.7％）
Unknown
Experienced（27.5％）
661 SMEs168 large companies
Not experienced（68.4％）
- 15 -
3) Challenges faced by SMEs in Patent Licensing
Fig. 5-3 shows the results of a survey on challenges faced by SMEs in carrying out activities
related to patent licensing.
Most frequently cited challenges include: little experience and know-how for concluding
licensing agreements for patented technology (40.4%); limited in-house organizational units and
personnel to conduct negotiations (36.4%); and the inability to locate appropriate technology and
potential trading partners on their own (35.9%). This suggests that arrangements to cover these
shortfalls in the areas of experience, know-how and human resources would promote greater patent
licensing among SMEs.
Fig. 5-3 Challenges faced by SMEs in Patent Licensing６）
40.4%
36.4%
35.9%
32.6%
23.0%
22.7%
20.1%
16.8%
0% 10% 20% 30% 40% 50%
特許ライセンス契約の経験、
ノウハウが少ない
相手企業との交渉が
負担（部署・人材がない）
導入する特許技術、提供先企業
を自社では見つけられない
相手企業の状況が分からず、
（最初は）直接交渉したくない
特許技術の導入による事業計画
（ビジネスプラン）構築が問題
特許技術導入に充てる
資金的余裕がない
手間がかかる割りに収入が
期待できない
ライセンス供与後の技術指導が
面倒、人員の余裕がない
課題点
(Source: “Survey and Analysis on Conclusion of Contract of Encouraging Patent Licensing Service,”
INPIT, Sept. 1, 2006)
4) Technical Fields in which SMEs have Technological Needs
Fig. 5-4 shows a breakdown of SMEs needs for technologies in various technical fields, as
identified by interviews conducted by ADs. The data shown is from 2006. Some SMEs had needs in
multiple fields.
The chart shows that are significant needs among SMEs for technologies in the fields of machinery
and processing (18.7%), lifestyle and culture (17.7%), food products and biotechnology (14.5%),
Challenges
Shortage of experience and know how in license agreement
Negotiation with other company is burden (lack of persons and dept. in charge)
SMEs can not find out licensable patents by themselves
Hesitate to direct negotiation (at first) because the situation of opponent company is not clear
Difficulty in making business plan for the licensed patent technology
Shortage of money for the introduction of patent technology
Expected revenue is small compared with necessary effort
Supply of technical guidance is troublesome after giving license
- 16 -
chemicals (13.4%), electrical machinery and electronics (9.9%), and civil engineering and construction
(9.4%). Although these results generally correspond to the component percentages of technical fields in
which agreements were concluded under the Patent Licensing Project, there are noteworthy differences
in lifestyle and culture, which includes the subcategory of nursing care, as well as electrical machinery
and electronics, and food products and biotechnology. Needs for lifestyle and culture technologies, at
17.7%, accounted for a greater proportion of the total than did agreements concluded in this area, which
came to 6%. Electrical machinery and electronics, and food products and biotechnology, on the other
hand, accounted for a larger proportion of deals made (17%, 21%, respectively) than needs (9.9%,
14.5%, respectively).
Fig. 5-4 Technical Fields in Which SMEs Have Technological Needs
生活文化,17.7%
繊維.紙, 2.7%
機械加工,18.7%
食品バイオ,14.5%
化学薬品,13.4%
有機材料, 3.6%
電気電子, 9.9%
金属材料, 3.9%
輸送, 1.4%
土木建築, 9.4%
情報通信, 1.8%
無機材料, 3.0%
5) Factors that Prompted SMEs to become Involved in Patent Licensing
Fig. 5-5 shows the survey results concerning factors that prompted SMEs to become involved in
patent licensing. The survey revealed that one of the predominant factors was a personal connection,
including “an approach by an AD” and “consulting with an AD,” while another was exposure to
activities or publications promoting patent licensing such as fairs, briefing sessions, guidebooks,
questionnaires and so on. This suggests that further personal connections made by ADs visiting
companies, and more fairs and briefing sessions publicizing patent licensing will encourage additional
SMEs to seek patent licensing agreements.
Chemicals and Pharmaceuticals
(13.4%)
Lifestyle and Culture (17.7%)
Textiles and Paper (2.7%)
Machine and Mechanical Processing Machine
(18.7%)
Food and Biotechnology (14.5%)
Organic materials (3.6%)
Electrical and Electronics (9.9%)
Metallic Materials (3.9%)
Transportation (1.4%)
Civil and Building (9.4%)
Information and Communication Technology (1.8%)
Inorganic Materials (3.0%)
- 17 -
Fig. 5-5 Factors that Prompted SMEs to Become Involved in Patent Licensing５）
0% 5% 10% 15% 20% 25% 30% 35% 40%
特許流通ADからのアプローチ
特許流通ADへの問い合わせ
特許流通フェア、説明会
仲介希望
アンケート
特許流通ＤＢ
ガイドブック、開放事例集等
その他
成約事例94／未成約事例7
成約事例 店違約事例
6) Factors Preventing the Conclusion of Agreements
A survey on factors that prevented negotiations from resulting in conclusive agreements was carried
out to identify potential pitfalls for negotiating parties.
As shown in Fig. 5-6, the most frequently cited cause of deals failing was a “lack of high-quality,
complete technology seeds.” This implies that SMEs lack the capacity to undertake their own
development and incubation and therefore seek high-quality technologies ready for immediate
application. The second most frequently cited cause was “difficulties in negotiating financial terms such
as licensing fees,” indicating that many SMEs do have ready cash to spare and highlighting the need to a
find a win-win solution with regard to the financial aspects of contracts.
The third most frequently cited cause was “mismatch of needs and proposed technologies,” which
needs no further investigation to why negotiations would fail to proceed.
The fourth most frequently cited cause was “difficulties in cultivating a market,” a problem that can
be solved with the help of experts in market development and inter-regional cooperation between SMEs.
(Successful Cases (94) and Unsuccessful Cases (7))
Approach from AD
Company’ s inquiry to AD
Patent licensing fair, seminar
Company’ s request for coordination by AD
Enquete
Patent licensing DB
Guide book, open art patents book
Others
Successful Cases
Unsuccessful Cases
- 18 -
Fig. 5-6 Factors Preventing the Conclusion of Agreements５）
0%
5%
10%
15%
20%
25%
30%
35%
ラ
イ
セ
ンス費
用
等
の
価
格
交
渉
技
術
指
導
を含
めた交
渉
シー
ズ
の質
・完
成
度
交
渉
担
当
者
の選
択
企
業
信
用
度
特
許
流
通
A
D
の専
門
分
野
と
の相
違
コス
ト
ア
ップ
（製
品
）
市
場
・販
売
開
拓
が困
難
人
材
不
足
研
究
開
発
・設
備
資
金
不
足
ニー
ズ技
術
と
シー
ズ
技
術
の食
い違
い
そ
の他
割
合
（％
）
7) Specific Support Needs of SMEs regarding Patent Licensing
A survey on the particulars of actual support provided by ADs to SMEs was carried out to identify
future needs of SMEs with regard to patent licensing. See Fig. 5-7 for the results of the survey.
(i) The form of support most needed was “advice on completion of deals (contract coverage and
procedure for execution of an agreement)” at 50.3%. This clearly indicates a lack of experience on
the part of SMEs in terms of negotiating these kinds of agreements and a limited ability to hire
professional consultants.
(ii) The second most needed form of support was related to the potential technologies and included
“presentation of other companies’ patented technologies that can provide solutions to the SME’s
technological issues” (33.3%) and “presentation of technical information, excluding patent
information, and advice for the purpose of solving problems” (27.7%). These tasks often tested the
ability of the ADs, many of whom have an engineering background.
(iii) Many SMEs also reported needing “referrals to a public or private organization that provides
technical support and guidance” (25.8%), “referrals to professionals such as lawyers, patent attorneys
or professional engineers” (11.3%) or (9.1%). These requests often tested ADs in terms of personal
connections with other ADs and regional networks of technology transfer organizations.
(iv) Given that “investigating technological challenges involved in introducing new technologies”
(24.7%) concerns the “corporate needs” of SMEs, the ability of ADs to build relationships based on
trust is a key skill in this context.
(v) Other forms of support needed included “advice on patent registration proceedings including the
Com
pone
nt ra
tio (%
)
Neg
otia
tion
on ro
yalty
fee
pric
e
Lack
of s
ervi
ce in
clud
ing
tech
nolo
gy g
uida
nce
Qua
lity
and
com
plet
enes
s o
f see
ds
Sel
ectio
n of
uns
uita
ble
nego
tiato
r
Com
pany
’s
degr
ee o
f tru
st
See
d di
ffere
nt fr
om A
D’
s fi
eld
of e
xper
tise
Intro
duct
ion
caus
es c
ost u
p of
pro
duct
s
Diff
icul
ty in
mar
ketin
g
Lac
k of
tale
nted
per
sons
Mon
ey s
horta
ge fo
r R
&D
and
inve
stm
ent
Mis
mat
ch o
f nee
ds a
nd s
eeds
Oth
ers
- 19 -
filing of patent applications” (14.6%) and “advice on the formulation of commercial and business
plans” (11.1%), both of which require an understanding of intellectual property and general business
skills.
Fig. 5-7 Specific Support Provided by ADs６）
50.3%
33.3%
27.7%
25.8%
24.7%
21.0%
14.6%
11.4%
11.3%
11.1%
9.1%
8.5%
7.2%
6.7%
19.3%
20.7%
15.6%
15.6%
11.7%
5.9%
4.6%
0.0% 10.0% 20.0% 30.0% 40.0% 50.0% 60.0%
契約（契約内容や契約手続）に
関するアドバイス
他社の特許技術（技術課題の
解決手段）の紹介
課題解決のため、技術情報（特許以外）の
紹介や技術的アドバイス
技術相談・技術指導を行う公的機関や
企業の紹介
貴社における技術課題、新技術導入の
意向（技術ニーズ）の調査
特許出願など、特許取得手続に
関するアドバイス
特許情報の取得・検索法尾方に
関するアドバイス
販路開拓に関するアドバイス
弁護士、弁理士、技術士などの
専門家人材の紹介
事業化計画、ビジネスプランに
関するアドバイス
試作先の紹介など
試作支援・アドバイス
導入特許技術の詳細（機能、信頼性、
量産性、実用化コスト）説明
特許侵害など特許紛争に
関するアドバイス
公的融資制度の紹介など資金調達に
関するアドバイス
特許流通促進事業のＰＲ
特許流通促進セミナーの開催案内
特許流通データベースの説明
特許流通フェアへの出展要請
特許流通データベースへの登録の依頼
特許流通支援チャートの説明
その他
支援内容
(Source: “Survey and Analysis on the Conclusion of Contracts on Encouraging Patent Licensing
Service,” INPIT, Sept. 1, 2006)
Tasks involved in support provided by ADs
Advice on completion of deals (contract coverage and procedure)
Presentation of other companies’ patented technologies that can provide solutions to technological issues
Presentation of technical information, excluding patent information, and advice for the purpose of solving problems
Referrals to a public or private organization that provides technical support and guidance
Investigating technological challenges involved in introducing new technologies
Advice on prosecution of patent registration proceedings, including filing of a patent application
Advice on obtaining and searching method for patent information (referral to professionals)
Advice on market cultivation
Referral to professionals such as lawyers, patent attorneys, or professional engineers
Advice on formulation of commercialization and business plans
Support for and advice on prototype manufacturing, such as referral to a prototype manufacturer
Others
Exposition of a patent licensing support chart
Making a request for registration in patent licensing DB
Filing a request for participating in patent licensing fairs
Exposition of patent licensing DB
Notice of patent licensing promotion seminars
Giving publicity to the Patent Licensing Promotion Project
Advice on financing, incl. referral to public financing programs
Advice on patent infringement and patent disputes
Presentation of details on the patented technology to be introduced (incl. functions, reliability, mass productivity,
and commercialization cost)
- 20 -
6. Current Status of Regional Support Available for Patent Licensing
This section will provide an overview of the various arrangements that regional authorities currently
have in place to promote patent licensing, with reference to “Prefectural and Regional Conditions: An
Overview of the AD’s Cooperation Framework,” INPIT, May 18, 2006.７）
1) Supporting Patent Licensing Advisors by Providing Access to Corporate Information７）
Although private enterprise is the biggest player in patent licensing, municipal authorities are one
of the largest repositories of information relating to the local business environment. This information is
collected during the implementation of various subsidy programs, committee meetings, study group
meetings, seminars, social gatherings, surveys, hearings, on-site visits and so forth.
Many municipal governments have in place various schemes to support ADs and assistant ADs.
Similarly, regional business associations and chambers of commerce and industry have a wealth of data
on local corporations, including information on patents.
2) Municipal Government Referral Service connecting Companies with Patent Licensing Advisors７）
Many municipal authorities will refer companies that approach them for advice to an AD or an
assistant AD. Such approaches are made at forums, fairs, technical consultation meetings and exhibitions
organized by the authority or at corporate technical consultations held under the auspices of the local
authority. Other channels include organizations that provide support for SMEs and public research
laboratories.
3) Publicizing Patent Licensing Activities by Municipal Governments７）
Local governments often provide information about their patent licensing activities, promotional
activities, the activities of ADs and assistant ADs, and examples of successful patent deals via a variety
of media including newspapers, TV, newsletters, the Internet and publications produced by public
research laboratories and SME support organizations.
4) Support for Patent Licensing through Local Authorities’ Briefing Sessions and E-Mail Newsletters
and Expert Advice７）
Support for patent licensing is available in a variety of forms and provided in accordance with the
specific characteristics or situation of the region. This can include information sessions targeting the local
business community, briefing sessions, seminars, study sessions and social gatherings. In addition,
information and updates are provided via e-mail newsletters while expert advice from professionals
engaged in intellectual property and patent trading is also made available.
- 21 -
5) Patent Information Provision at the Regional Level7）
In most prefectures and regions, information on patents issued on promising technologies with
relevance to specific regions is periodically made available in the form of publications, databases, the
Internet and mail-outs. Such information covers patents owned by public research laboratories and other
research institutions such as universities.
This information is also provided at trade, technology and business fairs and exhibitions organized
by or with the cooperation of prefectural governments. In some prefectures, coordinators from pubic
research laboratories visit corporations and make on-site presentations on promising technologies.
6) Cooperation between Municipal Governments and Patent Licensing Advisors 7）
(i) In order that they may do their jobs properly, it is important for ADs to maintain good relations with
local governments. ADs generally meet with representatives of the local municipal government on a
monthly or regular basis to exchange information and keep the lines of communication open.
(ii) In many cases, ADs also take part in conferences known as “cooperation meetings” attended by
other organizations involved in patent licensing in the local area. The term “cooperation meeting”
refers to a meeting with organizations working to promote industry-government cooperation or a
meeting with organizations supporting SMEs. This type of meeting may also be referred to as a
technology transfer liaison conference, new business support conference, intellectual property strategy
conference, platform operation conference or a conference of prefectural coordinators.
(iii) Regional bodies have well-trained staff in place to support patent licensing. These staff members can
provide valuable assistance to ADs and assistant ADs in terms of securing support for the
commercialization of promising technologies.
For example, many municipal government headquarters have housed in the same building:
advisors to support the utilization of patent information, ADs, technology transfer coordinators,
coordinators from public research laboratories and an office of an organization that provides support
for SMEs. This allows for a one-stop service covering the whole process of patent licensing from the
provision of information on issued patents to commercialization. Local governments with a less well-
developed framework of cooperation nonetheless place their personnel engaged in patent licensing in
the same building to facilitate communication.
Local government staff engaged in patent licensing may include support staff for matched
trading, new technology agents, marketing managers, incubation managers, business producers,
support coordinators and so on.
(iv) Downstream support for after a patent has been acquired includes help in raising funds and
developing markets, and technical and management support. ADs and assistant ADs are required to
- 22 -
cooperate with specialist local government staff to act as a kind of bridge. Organizations that
specialize in downstream cooperation are called by various names, including industry support centers,
business revitalization centers, regional platforms, venture support centers, new business support
centers and so on.
(v) To support patent licensing, most local governments provide aid in the form of subsidized patent
application fees, database search costs and PCT application fees. Free consultations with patent
attorneys and others are also provided.
(vi) Some local authorities will also subsidize the commercialization of transferred technologies as well
as undertake feasibility studies and provide consulting and coaching for the formulation of business
plans.
Other local governments provide loans for R&D and commercialization projects based on an
acquired patent, subsidize commercialization costs, offer AD support for the commercialization
process and support companies post-commercialization by making them preferred vendors.
(vii) Some local authorities develop and implement their own projects to support patent licensing and the
creation and utilization of intellectual property. Quite a few local authorities have formulated an
intellectual property strategy and implement support projects based on this strategy.
7. Measures Encouraging Patent Licensing in Regions
1) Activities of Patent Licensing Advisors
AD activities involve two distinct approaches: a “needs-driven” approach and a “technology
seeds-driven” approach. The first approach begins with an understanding of the enterprise’s needs,
which enables the AD to refer potential technologies that match those needs to the enterprise. The
second approach is based on knowing which technologies are available and then finding an enterprise
that is likely to have a need for that technology. Along the way, these approaches merge to become a
complete process.
A “needs-driven” approach starts with the AD acquiring information on local enterprises from
local authorities, SME support organizations, referrals from others, fairs, business associations and
chambers of commerce and industry. The AD will then decide which companies to meet with, make the
necessary preparations, and then pay them a visit.
When an AD visits a company, the most important task is to accurately identify that company’s
technological needs in regard to product development and/or commercialization. If this can be done
successfully, the AD will then refer various technologies to the company until a match is found. The deal
can then be brought to a successful conclusion, with the AD continuing to provide support to both parties
throughout the negotiation process.
Following the “technology seeds-driven” model, the AD identifies technologies with potentially
- 23 -
wide applications and searches for companies with matching needs. Using similar avenues to those
listed above, the AD gathers information on various companies, arranges meetings with those
companies to examine the potential for an agreement and eventually brings the deal to a successful
conclusion, again providing support during the negotiating stage.
As shown in Fig. 7-1, both approaches begin with an AD identifying needs and going through a
cycle of referring potential technologies, achieving a match, and returning to identifying needs. The
process repeats, leading to either a successful or unsuccessful conclusion.
- 2
4 -
Fig.
7-1 A
ctivi
ties o
f AD
s (N
eeds
-Driv
en A
ppro
ach/
Tech
nolo
gy S
eeds
-Driv
en A
ppro
ach)
ニーズ
把握／
深化
シーズ
選定
ニーズ
把握／
深化
シーズ
選定
シーズ
紹介
マッチ
ング
契約
交渉
支援
成約
企業
訪問
訪問
企業の
選定
訪問
準備
企業
訪問
訪問
企業の
選定
訪問
準備
訪問
企業の
選定
訪問
準備
（ニーズ展
開）
（シーズ展
開）
（シーズ展
開）
シーズ
選定
●ニーズ展
開：
先ずニーズを把
握し、それ
に適
合するシーズを紹介
する方
法。
シーズ展
開：
先ずシーズを選定し、それに適合
する企業
を探索する方法。
（ただし、両者
の中
間的な方
法も多
い。）
商工会
、商
工会
議所
フェア、
アンケート
紹介
中小
企業
支援
団体
自治
体関
連組織
商工会
、商
工会
議所
商工会
、商
工会
議所
フェア、
アンケート
フェア、
アンケート
紹介
紹介
中小
企業
支援
団体
中小
企業
支援
団体
自治
体関
連組織
自治
体関
連組織
（企
業情報
源）
（ニーズ展
開）
- 24 -
Fig. 7-1 Activities of ADs (Needs-Driven Approach/Technology Seeds-Driven Approach)
ニーズ把握／深化
シーズ選定
ニーズ把握／深化
シーズ選定
シーズ紹介
マッチング
契約交渉支援
成約企業訪問
訪問企業の選定
訪問準備
企業訪問
訪問企業の選定
訪問準備
訪問企業の選定
訪問準備
（ニーズ展開）
（シーズ展開）
（シーズ展開）
シーズ選定
● ニーズ展開 ： 先ずニーズを把握し、それに適合するシーズを紹介する方法。
シーズ展開 ： 先ずシーズを選定し、それに適合する企業 を探索する方法。（ただし、両者の中間的な方法も多い。）
商工会、商工会議所
フェア、アンケート
紹介
中小企業支援団体
自治体関連組織
商工会、商工会議所商工会、
商工会議所
フェア、アンケートフェア、
アンケート
紹介紹介
中小企業支援団体中小企業支援団体
自治体関連組織自治体
関連組織
（企業情報源）
（ニーズ展開）
(See
ds-D
riven
Pro
cess
)
(See
ds-D
riven
Pro
cess
)
Sele
ctio
n o
f see
ds
(Nee
ds-D
riven
Pro
cess
)
Loc
al a
utho
rity
uni
ts
Supp
ort
org
aniz
atio
ns fo
r SM
Es
Ref
erra
l
Fai
r/que
stio
nnai
re s
urve
y
Busi
ness
ass
ocia
tions
/ch
ambe
rs o
f com
mer
ce a
nd in
dust
ry
(Sou
rces
of c
orpo
rate
info
rmat
ion)
Sele
ctio
n o
f an
ent
erpr
ise
to v
isit
Prep
arat
ions
for a
visit
Visi
t to
an e
nter
pris
e
Und
erst
andi
ng o
f nee
ds a
nd d
eepe
ning
of
und
erst
andi
ng
Sele
ctio
n o
f see
dsR
efer
ral
of s
eeds
Mat
chin
gSu
ppor
t for
neg
otiat
ions
on
term
sSu
cces
sful
dea
l
(Nee
ds-D
riven
Pro
cess
)
Nee
ds-D
riven
Pro
cess
: Und
erst
andi
ng o
f nee
ds c
omes
firs
t, fo
llow
ed b
y re
ferr
al o
f the
see
ds
that
wou
ld m
atch
the
need
s.
Seed
s-D
riven
Pro
cess
: Sel
ectio
n of
see
ds c
omes
firs
t, fo
llow
ed b
y a
sear
ch fo
r an
ente
rpris
e th
at is
like
ly to
hav
e ne
eds
that
wou
ld m
atch
the
seed
s.(In
pra
ctic
e, h
owev
er, p
roce
sses
falli
ng s
omew
here
in b
etw
een
are
ofte
n em
ploy
ed.)
- 25 -
2) A Day in the Life of a Patent Licensing Advisor
Fig. 7-2 shows the amount of time an AD spends on various tasks in an average working day. The
primary task of visiting companies (30.7%), combined with preparations for those visits (18.0%),
accounts for about half (48.7%) of an average day, not including travel time (25.5%), which accounts for
another quarter. Three-quarters (74.2%) of the average day are therefore spent on tasks associated with
meeting with companies, and the remaining quarter (25.8%) devoted to office-based work including
responding to visitor inquiries, day-to-day tasks such as weekly reports and managing patent registration
advisors (known at the time of writing as “patent licensing associates”).
Breaking tasks down between office work (including preparations for visits, day-to-day tasks,
responding to visitor inquiries and managing patent registration advisors) and field work (visiting
companies, including travel time) is split roughly fifty-fifty, with the former accounting for 43.8% of the
day and the latter for the remaining 56.2%.
Among others, the fact that travel to/from an enterprise takes approx. a quarter of a day clearly shows
features of an AD’s activities that uphold enterprise visits. On average, it takes one hour to go to an
enterprise and about one hour to get back from the enterprise.
Fig. 7-2 A Day in the Life of an AD
企業訪問, 30.7%
訪問準備, 18.0%
移動時間, 25.5%
ルーチン業務,
11.0%
来訪者対応,
10.5%登録AD管理, 4.3%
3) Sources of Information on Companies
Fig. 7-3 shows the results of a survey on sources of information used by ADs to identify candidate
companies.
Industrial technology centers and municipal governments have vast stores of information about
local companies that have been obtained over long years of providing technical and other support to
regional SMEs. These institutions serve as a major source of information, with the former employing
numerous advisors and the latter acting as the main driver in the promotion of patent licensing.
Given that much of SME support is organized at the regional level, this is also a good source of
Visit to companies (30.7%)
Preparations for a visit (18.0%) Travel time (25.5%)
Performance of day-to-day business (11.0%)
Response to visitors from outside (10.5%)
Management of patent registration advisor (4.3%)
- 26 -
important information for ADs. The fourth most important means by which ADs acquire information
about companies is via personal introductions from members of the AD’s business networks. A personal
introduction from a mutual acquaintance often makes it easier for the AD to win the trust and confidence
of the company and thus facilitates the patent licensing process.
Patent fairs also provide a useful setting for ADs to gain referrals for potential technologies and
prospective licensors and licensees, as well as being a place where companies needing technologies and
patent owners come together. Corporate information obtained from these fairs is very valuable.
Business associations and chambers of commerce and industry also have a wealth of information
on enterprises in their local region. In particular, study groups and cross-industrial associations formed
under the auspices of these organizations attract large numbers of prospective licensors and licensees.
Fig. 7-3 Sources of Information on Companies
19.7 1917.4
13.410.7
6.7 5.93.9 3.2
0
5
10
15
20
25
I
Pセ
ンタ
ー
工
技
セ
ンタ
ー
自
治
体
地
域
プ
ラ
ット
フ
ォー
ム
紹
介フ
ェア
・ア
ンケー
ト等
商
工
会
商
工
会
議
所
書
籍
、新聞
等
飛
び
込
み
銀
行
利用
している
ADの
割合
（％
）
4) Company Visits
(i) Company visits made by ADs
The activities of an AD revolve around making visits to companies. Fig. 7.4 shows changes in
the number of company visits made by ADs. From fiscal 1997, for which only six months worth of
data is available, the number of visits made by ADs increased every year, peaking in fiscal 2006, after
which it decreased slightly. The total number of visits as of the end of December 2008 exceeded
150,000.
The decrease may be accounted for by the shift in emphasis from quantity to quality, with
contracts such as licensing agreements and assignments being sought more, and by a reduction in the
number of ADs.
Per
cent
age
of A
Ds
who
use
the
sour
ce (%
)
Indu
stria
l Tec
hnol
ogy Ｃ
ente
r/In
telle
ctua
l Pro
perty
Ｃen
ter
Loc
al a
utho
rity
Reg
iona
l pla
tform
Ref
erra
l
Fair/
ques
tionn
aire
Boo
k/ne
wsp
aper
Uns
olic
ited
call
Ban
k
Bus
ines
s as
soci
atio
ns/
Cha
mbe
rs o
f com
mer
ce
and
indu
stry
- 27 -
Fig. 7-4 Changes in the Number of Company Visits Made by ADs
0
5,000
10,000
15,000
20,000
25,000
H9 H10 H11 H12 H13 H14 H15 H16 H17 H18 H19H20.12末
平成年度
企
業
訪
問数
(ii) Interviewees
Given that ADs put most of their energy into developing relationships with SMEs, most of the
people interviewed were at the CEO and executive vice president level. Interviews were conducted to
a lesser extent with executive officers (16%), department managers (12%) and general supervisors
(5%).
In order for the AD to make an accurate assessment of an SME’s technological needs, it is
important that they meet directly with executives with decision-making power, such as the company
CEO or executive vice president. Taking directly talk with these executives enable the AD to
understand the enterprise’s true needs so that the AD can refer seeds of technology transfer and help
finalize contract terms that consider the true needs. It also speeds up the decision-making process
involved in the deal.
(iii) Length of time put into interviews
A survey on the length of time put into interviews on an AD’s visits to an enterprise revealed that
many interviews took 1.0 to 1.5 or 1.5 to 2.0 hours, averaging close to 1.5 hours. This represents a
compromise between the time constraints on busy executives at an SME and their need to take their
time in talking with the AD.
(iv) Tasks performed by an AD on an enterprise visit
Fig. 7-5 shows the results of a survey on the time an AD allocated to tasks during an enterprise visit
according to four task categories including: “Explaining on the organization for and patent licensing
projects;” “Listening to the company profile and enterprise products”, “Q & A;” and “Idle talk.” A
distinctive trend is seen in the figure in which the respective percentage of time put into “Q & A”
conversely decreases from 80% to 50%, 10% and 5% as the percentage of time put into “explaining
on the organization and patent licensing projects” increases from 5% to 20%, 40% and 80%. The “Q
& A” session provides an important opportunity for the AD to talk with the enterprise on equal
Num
ber o
f ent
erpr
ise
visi
ts
Fiscal year1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 End of
December 2008
- 28 -
footing, which is essential for establishing a relationship of mutual trust. Any reduction in the length
of this session would preclude the creation of such a relationship and, thus, the promotion of patent
licensing.
ADs shown to put 80% of their time into “explaining the organization and patent licensing projects”
had only one full year of experience and allocated little time for “listening to the company profile and
enterprise products” and “Q & A.” They therefore had difficulty in understanding the enterprise’s
needs and thus in yielding results. In contrast, ADs who put 5% of their time into “explaining the
organization and patent licensing projects” were an experienced, and put 80% of their time into “Q &
A” to hear from the executives of the enterprise. This enabled the creation of a relationship of mutual
trust and smooth progress in the deal. Such ADs yield top-class results.
【Fig. 7-5】 Tasks Performed by an AD on an Enterprise Visit
企業における業務内容
10102
80
2
1615
15
60
10
30
40
2027.3
18.7
36.3
17.7
20
20
50
55
80
10
0
10
20
30
40
50
60
70
80
90
事業説明（％） 企業説明（％） Q&A(%) 雑談（％）
業務時間割合（％）
業
務
時
間
割
合
（％
）
平均値
5％の人
5) Understanding and Deepening of Needs
(i) Changes in the Number of Enterprises’ Needs Identified
INPIT has a system in place in which an AD who made an enterprise visit is required to prepare and
submit a report on the enterprises’ identified needs on a weekly basis. Fig. 7-6 shows changes in the
total number of enterprises’ needs identified. Although, since the beginning of the Project, the total
number of enterprises’ needs identified has been increasing steadily owing to an increase in the number
of ADs and improved skills in understanding enterprises’ needs, it appears to be nearing a saturated
state since the fifth year of operation (2001) or thereabout. This may reflect the fact that the number of
ADs has leveled off and their activities have reached the stage of maturity in terms of the number of
enterprise visits made and their skills in understanding enterprises’ needs. Data for fiscal 2006 and
thereafter were omitted because the data became irrelevant due to a switch in goals relating to AD
activities.
Per
cent
age
of ti
me
put i
nto
task
s (%
)
The mean value
Explanation on the Measures Encouraging
Patent Licensing(%)
Receipt of explanation of company(%)
Q & A(%) Idle talk(%)
- 29 -
【Fig. 7-6】 Changes in the Number of Enterprises’ Needs Identified
0
500
1000
1500
2000
2500
3000
3500
4000
H9 H10 H11 H12 H13 H14 H15 H16 H17
平成年度
企
業
ニー
ズ
把
握
数
As of 2003, the Needs Database has become available. Use of the database has transformed the matching of needs and seeds from activities performed by individual ADs to a systematic activity involving all ADs, thus contributing to better results.
(ii) The Knack for eliciting enterprises’ needs Given that understanding enterprises’ needs is a critical aspect of patent licensing activities, ADs have been using their wits to learn skills for performing tasks based on their experience. Fig. 7-7 shows the results of a survey on knacks developed by ADs. As shown in the figure, the most frequently cited knack was “talking about a wide variety of subjects” while on an enterprise visit. Talking about a wide variety of subjects would create intimacy and thus a relationship of mutual trust, making it easier to elicit enterprises’ needs. As used herein, the term “talking about a wide variety of subjects” involves presentation of successful patent licensing deal case examples, explanation of potential benefits of patent licensing for enterprises, and presentation and discussion of specific seeds of technology transfer rather than talk driven by the subject of patent licensing. Another important knack in eliciting enterprises’ needs was to have common subjects of conversation arranged by examining corporate information as part of the process of preparing for an enterprise visit. “Creation of a relationship of mutual trust” is the most fundamental aspect of patent licensing activities, which, among others, involves repeat calls, visits on referral and quick responses. “The basic attitude required of an AD” is to become a good listener and be proficient in making small talk with interviewees so that she/he may have a good understanding of executive’ thoughts. It is also effective to have the interviewee informed of his/her interest in knowing of any problems the enterprise may have or any technology it may want to acquire beforehand at the time that she/he makes an appointment for the interview.
Tota
l num
ber o
f ent
erpr
ises
’ ne
eds
iden
tifie
d
Fiscal year1997 1998 1999 2000 2001 2002 2003 2004 2005
- 30 -
【Fig. 7-7】 Knacks of Eliciting Enterprises’ Needs 100
93
50
29
7
0
10
20
30
40
50
60
70
80
90
100
訪問時の豊富な話題
信頼性の構築
A
D
の基本姿勢
訪問準備
環境整備
企業の事前準備
*ADの意見数の最高値（14件）を100として相対的に表示した。
相対
的重
要度
6) Selection of Seeds
(i) Information sources used by ADs for Referral of Seeds
Given that the selection of seeds for referral was one of the most important steps toward successful
conclusion of a patent licensing deal, this subsection will examine results for a survey on
information sources used by Ads to select seeds for referral.
The survey revealed that the most frequently cited source was meetings of ADs (32%), some of
which led to a successful conclusion.
The second most frequently cited source was oneself (i.e. seeds that an AD found by visiting
companies) (20%), followed by the prefectural patent publications available in many regions (15%).
The results shown above are applicable to cases where ADs employ seeds-driven approaches in
which they select high-quality finished seeds for referral to enterprises. In the case where an AD
employs a needs-driven approach in which a referral of seeds to an enterprise is made based on the
enterprise’s identified needs, IPDL and the Patent Licensing Database are used as a major information
source.
In either case, before an AD makes a referral of seeds, it is important to perform a search for prior art
and similar patents, as well as an investigation on the existence of proprietary interests in the
technology under the referral so that the information for the prospective licensor and licensee may be
as accurate as possible.
7) Referral of Seeds
Fig. 7-8 shows changes in the total number of referrals made from 1997, in which the project started, to
2005. Data for fiscal 2006 and thereafter were omitted because they became irrelevant due to a switch in
Rel
ativ
e im
porta
nce*
To ta
lk a
bout
a w
ide
varie
ty o
f sub
ject
s
Cre
atio
n of
a
rela
tions
hip
of m
utua
l tru
st
Bas
ic a
ttitu
de
requ
ired
of a
n A
D
Pre
para
tion
of
envi
ronm
enta
l and
ot
her a
rran
gem
ents
Pre
para
tion
of
an e
nter
pris
e vi
sit
*Relative importance” represents a relative proportion of the frequency at which the item was cited by respondent ADs, as calculated with the highest frequency among all items assumed as 100, wherein multiple answers were included in the count. The highest frequency was 14.
- 31 -
goals relating to AD activities. The total number of referrals made appears to have reached a point of
saturation from 2003 or thereabout and leveled off at a little more than 5,000 per year, which is
equivalent to a little more than 70 per capita.
Upon receiving a seeds referral, an enterprise will start considering whether the seeds in the referral
would match its needs. Consequently, seeds in a referral do not always gain ground. In some cases, a
detailed study of the seeds in a referral evolves into understanding and/or a deepening of different new
needs. Locating and offering seeds that have the potential to match new needs would provide a short list
of seeds that match an enterprise’s needs.
【Fig. 7-8】 Changes in the Total Number of Performed Referrals of Seeds
0
1000
2000
3000
4000
5000
6000
7000
H9 H10 H11 H12 H13 H14 H15 H16 H17
平成年度
シー
ズ
紹
介
件
数
8) Matching
Once an AD is able to clearly locate seeds that would match an enterprise’s needs, his/her activities
move on to the next stage, i.e. matching needs and seeds between licensor and licensee, towards the
conclusion of a license agreement. In that stage, the parties of the deal see each other and negotiate to
finalize the terms of the deal. An AD supports the parties as a neutral intermediary so that the deal may
create a win-win relationship between the two. An AD usually has multiple pending at the same time. A
survey on the reality of the situation with AD workloads revealed that, on average, an AD has 12 deals
progressing simultaneously. In the opinion of ADs at TLOs, the largest number of deals an AD can
handle at the same time would be 10 or so. The workload limit may lie around here.
Another survey was conducted to discover how many times an AD performs matching before the deal
comes to a successful conclusion. It revealed that an AD performed matching 4.4 times on average.
Another survey on the intervals at which matching took place revealed an average interval of 2.4 weeks,
equivalent to a frequency of twice a month. The rationale for this was that an interval of once a week
might be too big a hassle to the enterprise and an interval of one month might be too long to ensure that
Tota
l Num
ber o
f See
d R
efer
rals
Per
form
ed
1998 1999 2000 2001 2002 2003 2004 2005Fiscal year
1997
- 32 -
the matter is fresh in the memory of people at the enterprise.
Fig. 7-9 shows the results of a survey on essential strategies developed by ADs to successfully perform
the task of matching.
It revealed that the most frequently cited strategy was “to make intensive efforts to finalize terms of the
deal in a short period of time,” in which both parties of the deal are supposed to remain keenly interested
in conclusion of the deal or, as the proverb says, “strike while the iron is hot.” The second most
frequently cited strategy was “to be a good listener to gain understanding of the enterprise’s thoughts.”
The third most frequently cited strategy was “to make detailed and complete arrangements.” Given that
enterprises’ thoughts vary from time to time, it is necessary to address issues involved in matching,
including financial ones, with constant attention to the right matching of enterprises’ needs for
technology introduction and seeds of technology transfer.
The fourth most frequently cited strategy was “to hold fast to a kind and unprejudiced attitude,” which
requires an AD to make good-faith efforts to find a “win-win” solution.
【Fig. 7-9】 Essential Strategies Developed by ADs to Successfully Perform the Task of Matching
マッチング段階においてADが是非為すべき事としてあげられた意見
100
71 71
57
29
0
20
40
60
80
100
120
短期集通の詰め
良く聞き
よく理解
抜けのな
い細やかな
A
D
の配慮
親切
、公平な
A
D
の態度
納得ゆくまで議論
*ADの意見数の最高値（7件）を100として相対的に表示した。
相
対
的
重
要
度
9) Support for Contract Negotiation
In contract negotiation, both parties give themselves away and therefore, an AD in a neutral position,
with a mission to mediate differences between parties, faces a crucial test.
(i) Potentially explosive questions in contract negotiation
Essential strategies cited by respondent ADs were divided into five categories, with the frequency at which items falling under a category were cited shown as the importance of the category.
Rel
ativ
e im
porta
nce
To m
ake
inte
nsiv
e ef
forts
with
in a
sho
rt pe
riod
of ti
me
To b
e a
good
list
ener
, to
gai
n un
ders
tand
ing
of th
e en
terp
rise
To m
ake
deta
iled
and
com
plet
e ar
rang
emen
ts
To h
old
fast
to a
kin
d an
d un
prej
udic
ed
attit
ude
To d
iscu
ss to
the
satis
fact
ion
of th
e ot
her p
arty
*Relative importance” represents a relative proportion of the frequency at which the item was cited by respondent ADs, as calculated with the highest frequency among all items assumed as 100, wherein multiple answers were included in the count. The highest frequency was 7.
- 33 -
A survey on potentially explosive questions in contract negotiation revealed that “royalty” was a clear
winner (60%). Considering that executives at an SME face difficult business judgments concerning
financial matters, this may be a natural result.
Second only next to “royalty” was “type of contract” (12%), a question of which type of contract should be
employed for the deal, license agreement, assignment contract or optional agreement, followed by
“sales territory” (11%), as an essential question in business operation, and “guarantee/warranty” of
performance and quality (10%).
(ii) AD response to any differences between the parties at the stage of contract execution
Contract negotiation does not always smooth its own way. Fig. 7-10 shows the results of a survey on
AD responses to complex problems in contract negotiation.
The most frequently cited response was “to mediating differences between the parties from a neutral
position in an impartial manner.” More specifically, an AD presents case examples of solutions that
could serve as an objective standard (for royalty, etc.) and mediates differences so that the parties may
come to a compromise. The second most frequent response was “having the parties work together for
mutual harmony and benefit.” This involves finding the middle ground within the compass of
sustainability of the licensee’s business lest either party enjoy an overwhelming advantage in the deal.
It is also important for an AD to refer an enterprise to a specialized lawyer as the need arises.
【Fig. 7-10】 AD Responses to Differences between the Parties at the Stage of Contract Execution
契約段階においてADが是非為すべき事としてあげられた意見
100
67 67
33
0
20
40
60
80
100
120
公平、中立的
立場で調整
両者の共存
共栄を図る
粘り強く調整
第三者に依頼
*ADの意見数の最高値（9件）を100として相対的に表示した。
相
対
的
重
要度
Rel
ativ
e im
porta
nce
*
To m
edia
te d
iffer
ence
s fro
m a
neu
tral p
ositi
on
in a
n im
parti
al m
anne
r
To h
ave
the
parti
es
wor
k to
geth
er fo
r m
utua
l har
mon
y an
d be
nefit
To te
naci
ousl
y at
tem
pt to
med
iate
di
ffere
nces
To re
fer t
he m
atte
r to
a th
ird p
arty
*Relative importance” represents a relative proportion of the frequency at which the item was cited by respondent ADs, as calculated with the highest frequency among all items assumed as 100, wherein multiple answers were included in the count. The highest frequency was 9.
Responses cited by respondent ADs were divided into four categories, with the frequency at which items falling under a category were cited shown as the importance of the category.
- 34 -
8. Encouraging Patent Licensing Supports for TLOs
1) Patent Licensing Advisor (AD) Supports for TLOs
The number of TLOs in Japan totals 51, including approved TLOs and authorized TLOs (as of July 1,
2008). In Japan, TLOs may be largely classified into two groups: dependent (affiliated) TLOs, which
handle intellectual properties of a university based on tie-ups with the university or independent of it; and
independent (regional) TLOs, which handle those of more than one university in individual regions
nationwide.
The Encouraging Patent Licensing Service has dispatched 44 patent licensing ADs (hereafter, ADs) to 37
TLOs (as of 2008) to provide them with patent licensing support services from a variety of aspects in line
with the current conditions of individual TLOs.
The typical role of an AD supporting a TLO is described below.
When the notification of a produced invention is submitted to the head office of the intellectual property
department of a university, the AD visits the inventor(s) and colleagues concerned at their research
laboratories, accompanied by the staff of the head office, to conduct a hearing on the invention. The AD
conducts a prior-art search and reviews the technological advantages and
marketability/commercialization of the invention to prepare the materials for evaluation of the invention.
Upon receiving it, a patent evaluation committee discusses whether the patent application is to be filed or
not based on the materials. In some cases, the AD is a member of the committee. Once filing of the patent
application has been decided and the application procedure has been accomplished, the AD prepares the
explanatory materials and visits an appropriate company(s) to introduce the patent. If the patent meets the
company’s needs, the AD begins to negotiate patent licensing with the company. If the negotiation
succeeds, both parties enter into licensing agreements as shown in Figure 8-1.
A difference between the TLO-based AD activity and region-based AD activity lies in that, for the latter,
seeking a licensor, licensee, and seeds, as well as taking a neutral stand, are important, while the former
focuses on a series of licenser support activities from the discovery of a new invention and seeking
licensees, to the conclusion of a contract because the AD is part of a patent licensing party’s staff and
seeds have been known.
- 35 -
[Fig. 8-1] AD supports for TLOs
- 3
5 -
[Fig
. 8-1
] AD
supp
orts
for T
LOs
- 3
5 -
[Fig
. 8-1
] AD
supp
orts
for T
LOs
- 36 -
As shown in Fig. 8-2, among the daily routine works assigned to the TLO-based AD, outside work such
as “visits to companies”(20%) and “visits to universities” (26%), which are the most important tasks,
account for about 60% (59%) when including “travel time” with them (13%), while inside work, or
“office work” is about 40%.
Office work consists of: duties related to granting a patent (40%), include a “prior-art search” (14%) and
“discussing patent applications”(26%); duties related to licensing (36%) include “discussing the measures
for encouraging patent licensing” (21%) and “preparations for visit” (15%); and “responding to visitors”
(16%).
[Fig. 8-2] Daily Routine Works Assigned to a TLO-based AD
大学訪問, 26.0%
移動時間, 13.0%
オフィス業務,
41.0%
企業訪問, 20.0%
2) Visit to Laboratories
Fig. 8-3 shows the results of a survey on work done by ADs first visiting a laboratory. “Visits to a
laboratory”, where the AD focuses on the discovery of a new invention, consists of activities (77.6%)
such as “listening to information on research and invented technology” (54.1%) and “related Q&A”
(23.5%). Besides that, the AD is responsible for “explaining intellectual properties/ encouraging patent
licensing service/ TLOs,” and others (12%).
[Fig. 8-3] Activities during Visits to the Laboratory
研究内容、発明技術の内容を聞
く, 54.1%
Q&A等, 23.5%
雑談, 10.3% 知財、事業TLO
等の説明, 12.0%Explanation of IP, TLO and licensing (12.0%)
To hear about the contents of research and inventions(54.1%)
Q and A (23.5%)
Chats (10.3%)
Visits to companies（20％）
Visits to universities（26％）
Time for transportation（13％）
Office work（41％）
- 37 -
ADs visit laboratories to interview specialists in a variety of fields. A survey on persons visited by ADs
(depending on the intentions) was conducted. “Professors” accounted for 41.2%, “associate professors”
for 27.7%, “assistant professors” for 15.3%, and “researchers” for 15.8% in descending order, as shown
in the above figure. The reason ADs want to interview professors is that they teach ADs the fruitful results
of research achieved in the laboratory based on long years of experience, as well as the background,
positioning, and evaluation results for the research of interest.
The time required for the AD to interview research staff during a visit to a laboratory was 1 to 1.5 hours
(averaging 1.1 hours) in most cases.
The result of a survey on the “the most important AD activity during a visit to a laboratory” showed that
the AD should intensively interview the researchers to collect information on research content, the new
invention, use of the invention, prospective industry, prospective companies, persons in charge, and
others, as a first-class listener; collected information was consolidated and refined into a solid database.
The second most important activity, from the standpoint of patents being further strengthened and made
easier to put into practical use, was “to support researchers,” and the third one was “to contribute to the
establishment of a relationship of trust between the parties concerned”.
Another important activity associated with “visits to the laboratory” is seeking inventors eligible for
patent licensing. This factor may be indispensable for successful patent licensing in TLOs. Accordingly, a
survey on the methods by which TLO-based ADs seek a researcher eligible for patent licensing was
conducted. The result of the survey is summarized as shown in Fig. 8-4. Figures in parentheses indicate
the number of responses.
[Fig. 8-4] Focused Factors for Seeking Researchers Eligible for Patent Licensing
外部研究費が多
い先生, 11
その他, 2
先生の個性, 14
研究室・研究内容, 4
特許申請が多い
先生, 10Researchers with many
patent applications (10%)
Researchers with many external grants (11%)
Personality of researchers (14%)
Contents and themes of contents and themes of research in laboratories
(4%)
Others(2%)
- 38 -
The first-ranked factor, “researcher’s personality,” means that an active and cooperative researcher, with
general and business-specific intelligence and cost knowledge, as well as the capacity to teach ADs the
use of inventions from an objective standpoint, is eligible.
The second-ranked factor, “researcher with many external research funds granted”, indicates that most of
research, joint research, and funded research conducted under governmental and cooperate subsidies may
satisfy social and business needs; accordingly, the results of research conducted by these researchers are
expected to be eligible for patent licensing. Since the “researcher who has filed a large number of patent
applications” tends to conduct research while considering the intellectual property rights associated with
them, the results of these researches are greatly expected to be eligible for patent licensing. The “grades of
laboratory and research” factor means that laboratories and researchers specializing in IT, nanotech, and
biological technologies and expected to be eligible for patent licensing are sought.
3) Search for Patents
The search for patents is important in recognizing the advantages and disadvantages of inventions with
respect to patent grants and differences from contending technologies in order to make plans for patent
licensing. A survey on the actual state of patent searches by ADs was conducted. The result is
summarized in Fig. 8-5. As known from the figure, ADs search for patents by using “keywords” and
“IPC (International Patent Classification),” as well as detailed searches using “FI/F Term,” which is a
patent classification originally developed in Japan, as well as searches using an appropriate combination
of them, depending on their intent. “Keyword search” (64.6%), which is most frequently used by ADs,
has an advantage of being relatively easier in conducting a search. “IPC+keyword,” (13.5%) combining
both keyword and IPC searches is the second most frequently used. The latter search method is assumed
to succeed in discovering target patents at a higher probability than that of the former method.
[Fig.8-5] Methods for Conducting a Prior-art Search
IPC検索, 6.7%
FI、Fターム、
ファセット, 7.2%
IPC＋キーワー
ド, 13.5%
FI、Fターム、
ファセット＋キー
ワード, 2.2%
キーワード検索,
64.4%
その他, 5.9%
By Keywords (64%)
By IPC Code (6.7%)
By FI/F Term/Facet (7.2%)
IPC and Keywords (13.5%)
FI, F-term, Facet and
Keywords (2.2%)Others (5.9%)
- 39 -
The result of a survey on the key to success in patent searches by ADs is shown in Fig. 8-6.
As known from the figure, the first-ranked key, “limiting and searching methods,” indicates that results
are converged by observing them with varied keywords to brush up, or that prior-arts are searched by
using a keyword, and then the search is continued by using a combination of the IPC and the keyword.
“Limiting range and searching range” means that the search is conducted from a wide variety of aspects
considering used technologies, their applications and other factors (because a patent may be granted to the
invention of interest in different fields) while being conducted based on papers, internet information, and
the actual conditions of peripheral technologies. “Preparation” means that a survey is conducted on
interdisciplinary knowledge or an AD goes to the inventor’s hearing with a searcher to select an
appropriate keyword.
[Fig. 8-6] Key to Success in a Patent Search
5
16
6
2
0
2
4
6
8
10
12
14
16
18
準
備調
査方
法
絞
込
み方法
検
索
範
囲
絞
込
み方法
そ
の他
意
見
数
Num
ber o
f res
pons
es
Pre
para
tion
Sea
rch
met
hods
, N
arro
w d
own
met
hods
Sco
pe o
f sea
rch,
N
arro
w d
own
of
scop
e of
sea
rch
Oth
ers
- 40 -
4) Evaluation of Inventions Any body, such as an invention evaluation committee, that is authorized by a university or TLO can decide whether an invention is eligible for a patent application after detailed examination. The members of the invention evaluation committee usually number from 5 to 20, depending on the university or TLO, with the average number being 9. The committee consists of representatives from a university (about 30%), the head office of the intellectual property department (about 20%), a TLO (about 35 to 40%), the private sector (15 to 20%), and others. The most critical key to success in patent searches is how many private sector representatives, i.e. persons are capable of appropriately evaluating the eligibility of new inventions for patent licensing, are participating in the committee. The evaluation items include patentability (novelty and non-obviousness), prior arts, contending technologies, adaptability, superiority, and commercialization. Among them, the most difficult challenge is to evaluate prospective commercialization (to evaluate from the aspect of business). The result of a survey on the evaluation of inventions by TLO-based ADs from the aspect of business is shown in Fig. 8-7.
[Fig. 8-7] Evaluation of Inventions from the Aspect of Business in Discussing Patent Application
プレマーケティング, 20%
外部依頼, 8%
その他, 8%
内部評価, 64%
Among methods for evaluating inventions, the most frequently used method is “internal evaluation” (64%), indicating that the TLO staff, including a TLO-based AD, decide whether inventions are eligible for patent application based on their own cumulative experiences. This method has inevitable disadvantage of limited accuracy. “Pre-marketing” involves the step of providing specialized companies in the field related to an invention with information on the content of an invention to get their opinions. Pre-marketing may improve the accuracy of evaluation of inventions from the aspect of business, but it is difficult to apply to various technologies of interest because it takes too much time. “Outsourcing” means that evaluation of inventions is outsourced to specialized subcontractors. This method is expected to achieve higher evaluation accuracy but is costly, inevitably leading to a limited number of inventions to be outsourced.
Evaluation by Inside Organization (64%)
Pre-marketing(20%)
Evaluation by Outside Company (8%)
Others (8%)
- 41 -
5) Preparing Seed Introductory Materials
Once it has been decided that the patent application of an invention is to be filed and the application
procedure has been made, seed introductory materials are prepared to explain the invention to companies.
A survey was conducted to examine who prepares these materials at a TLO. The result showed that the
ADs and associates accounted for 53%, far more than inventors (23%) and TLO staff (20%). Generally,
most TLOs prepare the materials in Japanese, but some prepare them both in Japanese (on the right side)
and in English (on the reverse side) from the standpoint of internationalization. When seeds are
introduced to foreign companies, this consideration is needed, because these companies are likely to
accept only the materials prepared by the inventor on faith.
It is vital that any invention be visually explained using, for example, samples and diagrams, and
additional information on application fields and the path toward commercialization is very useful from
the standpoint of patent licensing.
6) Visit to Companies
Once the seed introductory materials have been prepared, the AD visits companies. Since success in
patent licensing depends on how to discover companies to visit, a survey was conducted on the manner in
which they were identified. The result is shown in Fig. 8-8. As known from this figure, the information
sources are largely different from those of region-based ADs (Fig. 7-3). This is because, in some TLOs,
an inventor is acquainted with the companies in specialized application fields and their staff.
[Fig. 8-8] Sources of Information on Companies to Visit
TLO（含むAD人
脈), 23%
会員企業, 18%
大学, 4%
地域の企業研究
会, 4%
発明者, 41%
その他, 10%
As known from the figure, the responses of “inventor” as the information source accounts to 41%;
however, in the U.S. and Europe, it is assumed to reach about 80%. For this reason, relevant information
should be elicited during the hearing of an invention.
Inventor (41%)
TLO Members(including AD’ s personal connection)(23%)
Member companies of TLO (18%)
University (4%)
Meeting to study local company (4%)
Others (10%)
- 42 -
It goes without saying that a TLO (including the AD’s personal connection), the members of the TLO,
and others serve as information sources.
Most responders answered that the time required for a TLO-based AD to visit a company was 1 to 1.5
hours, the average time being 1.4 hours. The AD takes an average time of 1.2 hours for previous
arrangements; learning about seeds to be provided (45%), survey on the outline of a company, for
example, via Internet (29%), a survey on the patent granted to the company (12%), and a survey on topics
that may provide subjects of conversation (14%).
7) Introduction of Seeds and Understanding of Needs
The result of the survey showed that when an AD introduced seeds to companies, most of them exhibited
interest and considered patent licensing. This is because companies show interest in novel technologies
developed by university, and local companies place their trust in universities and the researchers in
university laboratories. To introduce seeds, it is important for the AD to discover if the introduced seeds
are compatible with company’s needs, as well as gain deep insight into their real needs. A survey on the
points ADs focus on in understanding a company’s needs was conducted. The result is shown in Fig. 8-9.
The first-ranked point is “creation of a relationship of trust” which is also ranked second in “Knacks of
Eliciting Enterprises’ Needs” as shown in Fig. 7-7. The second-ranked one, “recommendation of
researchers from university laboratories and of the university itself,” is specific to TLOs, which involves
the process of making the benefits of exploiting a wide spectrum of knowledge and expertise cultivated
by researchers over many years and the existing facilities of the university appealing. The remaining
points "elicitation of local company’s needs through introduction of seeds,” “creating atmosphere for free
conversation” and “repeat visit” are common to region-based ADs, who make the effort to understand
company’s needs”
[Fig. 8-9] Points ADs Focus on in Understanding Company’s Needs
5
4
3
4
1 1
3
1 1
0
1
2
3
4
5
6
信頼関係の構築
シーズ紹介からニーズ
リピート訪問
先生、大学を売り込む
現場を見る
事前準備
自由に話す雰囲気
提案
その他
意
見
数
Num
ber o
f AD
’s
opin
ions
Est
ablis
hmen
t of
the
trust
rela
tion
Nee
ds fi
ndin
g by
see
ds p
rese
ntat
ion
Rep
eat v
isit
PR
of a
ctiv
ity o
f u
nive
rsity
and
rese
arch
ers
On-
the-
spot
vis
iting
Pre
para
tion
befo
reha
nd
An
atm
osph
ere
to ta
lk fr
eely
Goo
d pr
opos
al
Oth
ers
- 43 -
8) Support of Contract Negotiation
Once it has been confirmed that the university or TLO seeds satisfy the company’s needs, contract
negotiation-the last step of the “exploitation of patent licensing” process- is commenced. Generally, the
ADs handle more than one license case of interest at the same time. Accordingly, a survey was conducted
on the number of license cases successfully brought to the stage of contract negotiation by individual
ADs. The largest number of these license cases is 10, the average value being 6.8. Most responders
answered that the number of license cases that ADs can handle at once is limited to at least 10 and it is
difficult to handle more than 10 license cases. The company and the TLO tend to hold meetings several
times until a contract is concluded. A survey was conducted on the number of meetings required to
conclude a contract. Most of the responders answered 3 to 5, with the average value being 3.7. A survey
conducted on the period from the first visit to the company until the conclusion of a contract showed that
an average of about 4.3 months were required, as shown in Fig. 8-10.
[Fig. 8-10] Period from Seeds-needs Matching until the Conclusion of a Contract
4
8
1
10
0
2
4
6
8
10
12
1月 2月 ３月 ４月 ５月 ６月 ７月 ８月 ９月 10月
マッチングから成約に至る期間
平均4.3ヶ月
Many activities encouraging the exploitation of TLO’s patented technologies take place in foreign
countries. According to survey responses, about 60% of TLO seeds have been introduced to foreign
companies.
The result of a survey on the most important issues in concluding of a contract showed that most
responders pointed out that patent royalty was too high. ADs were surveyed on keys to successful
conclusion of a contract, including how to address this issue. The result is shown in Fig. 8-11.
Jan Feb Mar Apr May Jun Jul Aug Sept OctPeriod from matching to contract (month)
Mean value (4.3 months)
- 44 -
[Fig. 8-11] Keys to the Successful Conclusion of a Contract
5
4
3
4
2
1
2
1 1
3
0
1
2
3
4
5
6
説得理論の準備
信頼関係の維持
タイミングよくフォロー
粘り強く率直に対応
大学のメリットをＰＲ
メリハリをつけた対応
合理的な料率
ガイドラインの作成
妥協点の見極め
その他
意
見
数
The first-ranked key is the “build-up of a scheme to persuade.” This means that multiple answer scenarios
are prepared to identify both compromising and uncompromising points. The second-ranked key is
“maintenance of a trust relationship,” which means that the exploitation of a patented technology of
interest is recommended in good faith while efforts are made to maintain the relationship of trust between
(the TLO, researcher of the university laboratory, university) and company from the standpoint of the
company. “Patient and faithful efforts to serve” means listening to the company’s requests and informing
the company of the AD’s requests to try to reach a compromise without being impatient. “Timely follow-
up” means that ADs push negotiations forward when the company is hot on the contract. “Campaign to
publicize the advantages of the use of a university” means that the benefits gained by exploiting the
accumulated knowledge and expertise of the researchers and facilities in university laboratories are
advertised.
A survey on actions taken if there is any difference in opinion during negotiation of a contract between
the parties concerned was conducted as with region-based ADs. The result is shown in Fig. 8-12.
The first-ranked action, “utilization of researchers at university laboratories and universities,” means that
the objective views of universities and researchers at university laboratories are explained and the benefits
gained by utilizing the university are advertised. “Flexible response” means that a compromise is flexibly
made on the cost, such as patent royalty, and the conditions of a contract, if possible, meaning that a
compromise considered reasonable by the company is reached from the standpoint of their business plan
is also important in a “search for a win-win compromise ground.”
“Compromise talk” means that a close discourse takes place between both parties and a rational direction
is discussed on equal footing to discover a satisfactory compromise.
Num
ber o
f AD
’s
opin
ions
Pre
pare
theo
ry to
per
suad
e
Mai
ntai
n th
e tr
ust r
elat
ion
Tim
ely
follo
w -u
p
Per
sist
ent a
nd s
traig
ht b
ehav
ior
Adv
ertis
e of
mer
its to
use
uni
vers
ity
Beh
avio
r with
acc
ent
Rea
sona
ble
roya
lty
Pre
pare
gui
de li
ne
Iden
tify
poin
t of
com
prom
ise
Oth
ers
- 45 -
[Fig. 8-12] AD Responses when there is a Difference of Opinion between both Parties
3
4 4
1
2
1
3
4
0
0.5
1
1.5
2
2.5
3
3.5
4
4.5
話し合いにより妥協点を
探る
柔軟に対応
先生、大学を活用
複数のシナリオを用意
W
i
n
-
W
i
n
の妥協点
を探す
社内を説得し易い論理の
提供
中間を狙う
その他
意
見
数
Num
ber o
f AD
’s
opin
ions
See
k fo
r set
tlem
ent
thro
ugh
disc
ussi
ons
Flex
ible
act
ions
Util
ize
the
pote
ntia
l of
uni
vers
ity a
nd te
ache
rs
Pre
pare
mul
tiple
sce
nario
s of
sol
utio
n
See
k fo
r W
in-W
in s
olut
ions
Del
iver
reas
ons
acc
epta
ble
in c
ompa
ny
Sea
rch
for c
ompr
omis
e
Oth
ers
- 46 -
9. Best Practices for Exploiting Patent Licensing
1) Best Practices for Exploiting Patent Licensing by Region-based ADs
Fig. 9-1 summarizes factors considered to be most important by region-based ADs for succeeding in
exploiting patent licensing. These factors are collectively called “best practices.” Among the best practice
factors for exploiting patent licensing, the most important one is “superior seeds.” The remaining factors
include “can-do president and motivated company,” “personal network,” “build-up of the trust
relationship,” “motivated and positive AD attitude,” “overcoming problems in downstream operations,”
“familiarized exploitation of patent licensing,” and “ADs rich in abilities and humanity.” Responses
from ADs are described below.
[Fig. 9-1] Best Practices for Exploiting Patent Licensing by Region-based ADs
11
9
5 5
4 4
3
2
0
2
4
6
8
10
12
良いシーズ
やる気社長
、元気企業
ネットワーク
信頼関係の構築
AD
の意思
、積極性
下流業務のネック解消
特許流通
への習熟
AD
能力
、人間性
意
見数
The ”superior seeds” factor empirically selected by ADs are of high quality with no need for further
research. It is more desirable to select seeds proven to be fruitful in the industry. Moreover, products
manufactured using the seeds need to be clearly visualized, enabling the market, whichever market can
accept them, to be easily identified. Furthermore, seeds should be compatible with any introducing
company in terms of technologies and facilities and be easer to put on their market via their distribution
channels. The shorter time-to-market seeds are likely to be accepted by small and medium-sized
enterprises (SMEs).
The “can-do president” factor of “can-do president and motivated company” means a president having
such qualities and abilities as: being aggressive and rich in a spirit of challenge, playing active roles in
new businesses, having a broader viewpoint of the world, being sufficiently flexible inexpressing respect
for technologies developed by others, and being willing to promote the exploitation of patent licensing.
Num
ber o
f AD
’s
opin
ions
Goo
d se
eds
Agg
ress
ive
pres
iden
t, A
ctiv
e co
mpa
ny
Net
wor
k
Est
ablis
hmen
t o
f tru
st re
latio
n
AD
's w
ill, v
italit
y
Sol
utio
n of
the
neck
poi
nt in
dow
nstre
am
Ski
lls in
pat
ent l
icen
sing
Abi
lity
and
pers
onal
ity o
f AD
- 47 -
The “motivated company” factor refers to a company led by the above-mentioned president, who makes
highly self-reliant efforts from the standpoint of an established vision while being technology-oriented.
This type of company may be appropriate for both the licenser and licensee.
The “personal network” factor is indispensable for exploiting patent licensing. The cooperation with and
personal network among other persons concerned, organizations and various fields of companies may
enable ADs to seek licensers and licensees in a wide range of fields, bringing a patent licensing contract to
conclusion. “Build-up of the trust relationship” is essential for the exploitation of patent licensing, because
the relationship of trust must have been established between the parties before the exploitation of patent
licensing can be achieved.
The top four of the best practice factors for exploiting patent licensing include: “superior seeds,” “can-do
president and motivated company,” “personal network,” and “build-up of the trust relationship”.
It is because the parties which have “superior seeds,” the parties with which a “personal network” is to be
established, and the parties with which the trust relationship is to be established are all companies in good
standing. The leading role is played by companies in exploiting patent licensing. Therefore, opportunities
for making contacts with companies in good standing may lead to successfully-discovered needs and
seeds and identified compatibility between them.
What action can ADs take to make contact with companies in good standing?
According to the responses by the ADs, target companies in good standing include those participating in a
venture group, those taking part in pan-industry social events, those attending study groups and social
gatherings held by local commercial and industrial associations, banks, and public research laboratories,
those giving presentations in local events and “exploiting patent licensing” fairs, those receiving a variety
of local public funding, subsidies, and support measures, and those attracting the attention of media
including TV and newspapers.
2) Best Practices for the Exploitation of Patent Licensing by TLO-based ADs
A survey on key points for the TLO-based ADs to successfully exploit patent licensing was conducted.
The result is shown in Fig. 9-2.
- 48 -
[Fig. 9-2] Best Practices for Exploiting Patent Licensing by TLO-based ADs
0
2
4
6
8
10
12
14
16
18
20
企業ニーズの把握
良いシーズの発掘
良い企業の紹介
信頼関係の構築
上手いＰＲ方法
共同研究を狙う
発明者の関与
他の案件推進法
その他
意
見
数
As with region-based ADs, the first-ranked factor is “discovery of superior seeds,” accounting for a very
high proportion. The remaining factors include “sophisticated PR methods” and “participation of
inventor,” both being specific to TLO-based ADs, and “introduction to companies in good standing” and
“build-up of the trust relationship,” both accounting for the same percentages and being cited as those of
region-based ADs. The responses by the ADs to the individual questions are described below.
In terms of “superior seeds,” the responses by the ADs include such seeds as high-quality, novel,
marketable, and unique ones.
The “sophisticated PR methods” factor includes easy-to-understand explanatory materials, as well as
visual materials (manufactured samples or visual samples) and media coverage.
The “participation of inventor” factor is specific to universities/TLOs. In some cases, an inventor has
knowledge of the applications of his invention, companies concerned, and persons in charge; moreover a
wide range of cooperation by universities and inventors is highly valued in society and the utilization of
a university’s facilities are very useful in commercializing the patented technology.
The “introduction to companies in good standing” and “build-up of the trust relationship” factors are
common to the region-based and TLO-based ADs.
The “introduction to companies in good standing” factor is more appropriate for TLO-based ADs than
for region-based ADs because inventors are likely to have information on companies in good standing
and a “win-win” relationship has been basically established, rather than competing as rivals.
If region-based ADs and TLO-based ADs cannot build the relationship of trust, both of them may not
encourage exploiting patent licensing. Accordingly, they need to give quickly faithful responses to any
request.
Num
ber o
f AD
’s
Opi
nion
s
Unde
rsta
ndin
g c
ompa
ny’s
nee
ds
Dis
cove
ry o
f g
ood
seed
s
Pre
sent
atio
n to
goo
d co
mpa
ny
Est
ablis
h tr
ust r
elat
ion
Goo
d pu
blic
rela
tion
of s
eeds
Sea
rch
for
join
t res
earc
hes
Invo
lvem
ent
of i
nven
tors
Oth
er m
etho
ds o
f pro
mot
ion
Oth
ers
- 49 -
10. Analysis of the Result of Exploiting Patent Licensing Service
1) Percentage of Seeds Completion
Fig. 10-1 shows the result of a survey on the percentage of seeds completion at a point where their patent
licensing is exploited. The seeds with high percentage of completion, for example, commercialized ones,
total 54%, nearly half of all the seeds, while about 43% are moderate-quality seeds for which only
prototype data or experimental data are available. The remaining 3% are seeds with a low percentage of
completion, for which only the idea or scheme has been planned, far less than those of the seeds with high
and moderate percentages of completion. This suggests that companies tend to actively attempt to pursue
a profit by taking a risk in the fields where they have technical capabilities. Assuming that any risk may
be mitigated by themselves, the companies selected seeds with a low percentage of completion (3%), for
which only ideas or schemes had been planned out, and seeds which do not always have a high
percentage of completion (43%). One of the aspects of exploiting patent licensing is “seeds may be
exploited even with risk if satisfying companies’ needs and technical potentials”.
[Fig. 10-1] Percentage of Exploited Seeds Completion
普通（試作品
データのみ、実
験データのみ）,
43%
低い（アイデア
構想のみ）, 3%
高い（事業化
済）, 54%
2) Business Fields in which Contracted Seeds have been Applied
Fig. 10-2 shows the business fields where seeds have been applied. In most cases, seeds for exploiting
patent licensing have been applied as new products or new technologies in the company’s existing
businesses, accounting for 58%. On the other hand, 32% of responders answered “new business,” being
ranked second. It is suggested that small and medium-sized enterprises tend to exploit patent licensing to
strengthen their existing businesses rather than for new businesses with high risk involved.
High (commercialized)(54%)
Ordinary (only with data of experiments or samples) (43%)
Low (only with ideas, concepts)(3%)
- 50 -
[Fig. 10-2] Business Fields in which Contracted Seeds have been Applied
新商品・新技術
だが既存事業,
58%
現実改善・合理
化, 10%
新規事業, 32%
3) Actual State of Granting Rights to Exploited Seeds
Fig. 10-3 shows the actual state of granting rights to seeds at the point of exploitation. As shown in the
figure, 42% of the region-based ADs answered registered patents, 30% being patents laid open to public
inspection, and 25% being patents filed. Generally, seeds tend to be treated as a package consisting of a
basic patent, more than one peripheral patent, and applied patents and the patents in the package include
any combination of registered, laid open to public inspection, and filed patents..
On the other hand, the patents laid open to public inspection account for approximately half of the
responses by TLO-based ADs, and the patents not yet open to public account for the remaining half
because filed patents are exploited before being laid open to public inspection and registration.
[Fig. 10-3] Patent Examination Stages at the Conclusion of a Contract
地域
登録
出願済
公開済
実用新案
その他 TLO
公開特
許, 44.1%未公開
特許,
55.9%
集計対象 常勤TLOアドバイザー23名
New business (32%)
New product/new technology
in existing business (58%)
Revise and improve present facilities (10%)
Region-based ADsOthers (2%)
Registered (42%)
Applied but not opened (25%)
Opened (30%)
Utility Model Patent (1%)
TLO
Not yet open to public
（55.9%）
Published（44.1％）
Responders: 33 full-time TLO-based ADs
- 51 -
4) Acquisition of Distribution Channels at the Conclusion of a Contract
Fig. 10-4 shows the percentage of acquired distribution channels at the conclusion of a contract. The
responses to the “acquired” distribution channels factor account for approximately half (55%), and the
responses to “not acquired” distribution channels are the remaining approximate half (45%).
Acquisition of distribution channels is indispensable for exploiting patent licensing. If no distribution
channel has been previously acquired, the business will fail in the worst case. For this reason, human
resources such as a “distribution channel advisor” and “marketing advisor,” who may provide support for
the acquisition of distribution channels, should be utilized if they have been assigned in local offices.
[Fig. 10-4] Distribution Channels for Contracted Seeds at the Conclusion of a Contract
これから開拓,
45%
既にある, 55%
5) Actual State of Contracted Seeds
“Actual state of contracted seeds” is part of the result of an analysis of about 6,000 contracted seeds (in
2005). As shown in Fig.10-5, the actual state of contracted seeds depends on the type of contract. In terms
of a typical “patent licensing” contract, the factor commercialized “products being sold” accounted for
45.9%, ranked first, and “products being developed toward commercialization” equaled 24.1% and
ranked second. As known from the figure, “the content of patent technology being reviewed” accounted
for 9.4% and “renounced business/dissolved contract/abandoned patent” equaled 11.3%. In terms of
“nondisclosure agreement,” although an advance to patent licensing contract was expected, the “products
being sold” factor accounts for 3.0%, while “renounced business/dissolved contract/abandoned patent”
equals 43.3%, being far more than that of “products being sold,” indicating that fewer seeds have been
commercialized. In terms of “option contract,” which determines whether a patent licensing contract is to
be concluded after a given period, the result of a survey showed that the “products being sold” factor
accounts for 5.9%, while “renounced business/dissolved contract/abandoned patent” equals 39.7%, being
far more than that of “products being sold,” indicating that the contracts were almost not successfully
terminated.
To be developed （45％）
Exist (55%)
- 52 -
[Fig. 10-5] Actual State of Contracted Seeds6)
9.4%
13.2%
16.1%
19.1%
13.0%
11.1%
10.0%
36.4%
35.3%
13.8%
24.1%
41.2%
12.7%
20.6%
44.2%
11.1%
20.0%
27.3%
23.5%
6.9%
45.9%
30.9%
8.0%
5.9%
9.1%
33.3%
13.3%
13.6%
21.6%
37.9%
11.3%
8.8%
43.3%
39.7%
18.2%
22.2%
26.7%
9.1%
9.8%
24.1%
5.9%
24.8%
14.7%
15.6%
22.2%
30.0%
13.6%
9.8%
17.2%
9.2%
0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%
特許権実施
許諾契約（n＝446）
特許権譲渡契約（n＝66）
秘密保持契約（n＝319）
オプション契約（n＝69）
共同研究・開発（n＝74）
部品・製品の
提供契約（n＝16）
ノウハウ提供契約（n＝30）
技術指導契約（n＝22）
不実施保障契約（n＝50）
その他（n＝29）
特許技術の内容を検討中 実用化に向けて製品開発中
製品販売中 事業化の断念・ライセンス契約の解消・特許の放棄
その他
(“Survey and Analysis on Conclusion of Contract for Encouraging Patent Licensing Services,” The National
Center for Industrial property Information and training, (Sep. 01, 2006)
6) Issues after the Conclusion of a Contract
Fig. 10-6 shows issues arising after the conclusion of a contract.
As known from the figure, among “issues arising after the conclusion of a contract,” “application
development toward commercialization and expertise transfer” (24.2%) is ranked first. This reflects the
fact that even after patent licensing has been exploited, the seeds need to be developed toward
commercialization. The “sales/product PR/cultivation of market” issues are ranked second with almost
the same percentages (24.0-25%). Further issues include “build-up of manufacturing/production system”
(13.5%) indispensable for commercialization and “funding for commercialization” (9.8%). Thus, the
result suggests that support needs to be provided to address these issues after patent licensing has been
exploited.
成約内容 Concluded
contract
License agreement(n=446)
Patent assignment contract (n=66)
Secrecy agreement(n=319)
Optional contract (n=69)
Joint R&D (n=74)
Supply contract of parts and products (n=16)
Know-how delivery contract (n=30)
Technical guidance contract (n=22)
Compensation contract for academic co-applicant (n=50)
Others (n=29)
Content of patented technology being reviewed
Products being developed toward commercialization
Products being sold Renounced business/dissolved contract/abandoned patentOthers
- 53 -
[Fig. 10-6] Issues after the Conclusion of a Contract6)
11.9%
25.1%
11.0%
9.6%
8.8%
4.9%
24.2%
24.0%
13.5%
9.8%
3.0%
2.8%
0% 10% 20% 30% 40%
製品化に向けた
応用開発（技術開発）や
ノウハウの移転
販売、製品ＰＲ
販路開拓
製造・生産体制の構築
事業化のための
資金調達
相手方の契約履行
の確認
特許侵害など紛争
への対応
(“Survey and Analysis on Conclusion of Contract for Encouraging Patent Licensing Service,” The National
Center for Industrial property Information and training, (Sep. 1, 2006)
Further technology development, transfer of know-how for
manufacturing
Selling, Product PR, Market development
Establishment of manufacturing, production organization
Confirmation of conformance of contract by opponents
Countermeasures for conflicts like patent infringement
Funding for commercialization
- 54 -
References
1) “Survey Research on the US Technology Transfer Market,” 2006 Report of The National Center for
Industrial Property Information and Training (July 9, 2007)
2)”Survey on the Trend of European Technology Transfer Markets,” 2007 Report of National Center for
Industrial Property Information and Training (INPIT) (May 12, 2008)
3) Internet home page of National Center for Industrial Property Information and Training
(http://www.ryutu.inpit.go.jp)
“Measures for encouraging patent licensing”
4) Internet home page of National Center for Industrial Property Information and Training
(http://www.ryutu.inpit.go.jp)
“Outcomes of measures for encouraging patent licensing”
5) “Follow-up on Measures for Encouraging Patent Licensing,” 1998 Patent Office Report (March 2000)
6) “Survey and Analysis on the Conclusion of Contracts on Encouraging Patent Licensing Service,” Report
of National Center for Industrial Property Information and Training
(Sep. 1, 2006)
7) “Circumstances Surrounding Patent Licensing ADs in Prefectures-Actual conditions of cooperation
among patent licensing ADs,” Report of National Center for Industrial Property Information and Training
(May 18, 2006)
