Intellectual property encompasses multiple concepts such as inventions, devices, designs, trademarks, copyrighted works, layout-designs of semiconductor circuits, matters protected under the Unfair Competition Prevention Act, and the like. In terms of subject matter, from among the various types of intellectual property that are expected to be created by the researchers of Kyoto University, Kyoto University is currently of the view that it would handle, administer, and operate inventions, devices and designs, as well as copyrighted works including parts of databases, computer programs, and digital content (in cases where the researcher who created such copyrighted works has made the submission to hope that the University administers the copyright to his/her creation). In addition, if any of intellectual property is created or obtained in the course of any research and development, such as biological resources including microbes, cells, experimental animals and new varieties of plants, raw materials including compounds, new materials, soil and stones, materials, samples, prototypes and model items (the “Research Materials”), which are to be provided to an external entity, the University will support the execution of a contract, negotiation and the like for the transfer of them, and enhance the safe and desirable use of the Research Materials outside the University. At the moment, the University does not handle academic theses, lectures, and other copyrighted works.
From the standpoint of developing academic research as a whole, certainly, there may be a view that publication in the form of theses at the earliest possible stage can expand knowledge as a public asset. However, such publication would not necessarily enhance industrialization and easily return the results of academic research to society. When an invention is industrialized, research and development toward its practical use based on that invention are usually needed. If such an invention is not protected by a patent, then the first company that attempts to commercialize it will have to bear a huge cost for its practical use, and even if it is commercialized, such a company would not be able to restrict imitations by other companies, and latecomer companies or large-scale companies capable of reducing costs would profit. In such an event, there may be no company that would think to initially engage in the difficulties of development, leading to a situation where the industrialization itself of inventions becomes diminished. In addition, if somebody files an application for a patent covering a minor improvement invention based on an invention which has already become public knowledge through publication toward its practical use, then such person would secure any and all rights pertaining to the industrialization of such invention, and the return of benefits to a society based on the invention could be distorted in a manner that was unintended by the initial inventor. If the right to the University’s invention is established under a patent, then it makes it possible to achieve a balance between contribution of an invention to society and public interest, through the grant of an exclusive license for the patent to a company that will pour its heart into the development enhancing industrialization, or grant non-exclusive licenses to multiple companies for a lower compensation realizing a wide range of diffusion. This is why obtaining a patent is important.
Notwithstanding the answer to Q1-2, certainly, there may be cases where the establishment of a right is ignored in some fields of academic study or by certain researchers, and the prevailing mainstream thought is that active disclosure is in the public interest. Kyoto University leaves the decision of whether or not to file an application for a patent to the inventor (however, this is limited to cases where the main purport thereof is to contribute to the public interest). Therefore, while an inventor is not restricted from publishing without notifying Kyoto University of an invention, disclosure of the details of the invention to any specific individual or organization before the publication, which would enable them to file an application for a patent, must be avoided. Furthermore, researchers and the like of Kyoto University cannot personally file an application for a patent or assign the right to patent regarding an invention generated from a research carried out using the funds, facilities, equipment or other resources of Kyoto University, without consultation with Kyoto University.
Unlike faculty members or researchers, undergraduate or postgraduate students do not have any employment relationship with the University and thus are under no obligation to comply with the Kyoto University Regulations on Invention. Therefore, the University has no basis to acquire any right to the invention of such students. However, considering that education and research are inextricably linked in the University, and, above all, undergraduate or postgraduate students assigned to a laboratory are engaged in research carried out by faculty members of the University under their supervision, it is possible that in many cases a student may become one of the inventors. In such cases, the University would make the student give his/her consent to be covered by the Kyoto University Regulations on Invention and assign the right to patent to the University. Of course, if such invention is explored in the industrial sector and any form of consideration therefor is obtained, then the consideration will be allocated to the inventor student as well as the faculty member in proportion to their share of the right to patent, and such allocation will continue even after the student’s graduation from or completion of the course. Also, in cases where an employee of a private company carries out research at the University as an student of the University or a collaborative researcher while keeping his/her position as an employee of the company, he/she can possibly assign his/her share in the generated invention to the company, not as an invention made by an internal researcher of the University but as an employee invention in the company, which would then be subject to a patent application solely by the company, or jointly with the University if another internal researcher of the University is also contributed. For inventions independently created by a student who was not assigned to any laboratory (for example, those generated from group activities, individual research or the like), the University will not take any specific measures, and the right pertaining thereto will be vested in that individual. In such case, if it is difficult for that individual to file an application and maintain the right, the student can request a voluntary assignment to the University and enable that right to be vested in the University. On the other hand, since a postgraduate researcher employed by using research expenses has an employment contract with the University, such researcher will basically make a submission to the University upon the generation of an invention, the same way any faculty member of the University does, to assign the right to patent to the University.
For collaborative research with private companies or the like, or research commissioned by the national government, an incorporated administrative agency or a private company, which involves the payment of research expenses, the treatment of the results generated therefrom is usually set forth in the relevant research contract. As to the share of the internal researcher of the University in the results generated from collaborative research, in principle, it will be vested in the University, but it can also be jointly owned taking into account the contribution or the like made by the company. While results generated from commissioned research will also be vested in the University in principle, the research contract can stipulate that a part thereof will be assigned to the commissioning party. Under a research commissioned by the national government, in many cases, it must be submitted the notification to the commissioning party so that the right is vested in the University pursuant to the Industrial Technology Enhancement Act (the so-called Japanese version of the Bayh-Dole Act), so please inform the University whenever results of a research based on a research contract are achieved. Also, even if there is no specific contract, for example, if a joint invention is generated in the course of research communications with researchers of external organizations, such as other universities or companies, while the share therein held by internal researchers of the University will be owned by the University in principle, the share therein held by an external inventor can be subject to a joint application with such organization in accordance with the rules of the organization to which such inventor belongs.
In principle, outside of the working hours as a faculty member of Kyoto University, the research results generated during a side job as an officer of a company utilizing research results, or during a side job such as technology consulting or the like, will be vested in the individual inventor. However, if the details of such a side job are inextricably linked with the University’s research, or the University’s facility, equipment, or other resource is used in performing the side job, then please seek the assistance of the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation. Although collaborative research can be carried out with an entity the researcher is dually affiliated with, such researcher must clearly segregate as far as possible the research memos, data records or the like throughout the research, and concurrently therewith in order to be able to determine whether, when a result is generated, it is the invention which such researcher invited as the internal researcher of the University or the side job of such entity. Also, when a result is generated, please seek the assistance of the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation.
You cannot file an application in the name of an individual using the expenses administered by the University, including donations. The Office of Society-Academia Collaboration for Innovation determines, after deliberation, whether or not acquisition is possible by taking into account the patentability, industrial usefulness of the invention, and expenses necessary to maintain the application. When the you propose that the University does not incur the cost, such as using donations from the laboratory or preparing descriptions yourself, it may be possible for the University to take procedures to maintain and utilize the application as an invention owned by the University. However, if utilization is expected to be difficult, where the continuous burden of expenses for maintenance and administration after the issuance of the patent is uncertain, or it is not clear whether you will be able to prepare sufficient descriptions on your own, then please note that the University may decide not to own the invention even if the University does not incur expenses.
Although there may be cases where an invention is not acquired by the University because no industrial usefulness is expected, or it has already been published or the like, if the reason for refusal of the acquisition is that the invention is incomplete or the data for working examples is poor, and if you are still thinking of filing an application after your research has progressed and if the content thereof becomes satisfactory, then please consult the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation.
In principle, we think that it is best to make the submission of the invention to the institution to which the individual belongs at the time of completion of the invention and for that institution to file a patent application. However, since it is possible that there may be cases where, for example, the research carried out before the transfer made a large contribution and discussions would be held between the institutions to jointly own the right, so please consult the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation.
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