The technology transferee or licensee of the notified invention will be considered from the time of the interview with the inventor. Currently, Kyoto University has executed master contracts for the technology transfer with TLO-KYOTO Co., Ltd., Shirankai (concerning the medical field) and iPS Academia Japan, Inc. (related to iPS) respectively, thus it is probable that the technology transfer will be facilitated through these contracts, or it is also probable to find a technology transferee by actively disseminating patents originated from and applied for by the University through a database, events or the like. Once licensing is decided, the University enters into a patent license agreement with such candidate technology transferee, whereby it receives consideration. The possible forms of the contract are a grant of exclusive or non-exclusive license and an assignment of the patent right, through which the University takes flexible measures (such as consideration under a running royalty based on sales or a fixed payment) tailored to the specific relationship with the company or the actual circumstances of the invention.
The inventor is the person who knows the relevant technology best, and it is quite natural that he/she has an idea or desire concerning the licensee or transferee of that technology. Kyoto University values the inventor’s intent when determining the licensee/transferee even if the right to patent is owned by the University. If you have any idea or desire concerning the licensee or transferee, please do not hesitate to consult with the person in charge.
As to a patent generated from collaborative research carried out with a company, there may be cases where the company and the University would jointly own the patent. The shares of the respective owners in the patent will be determined in the declaration of assignment or a written agreement on the joint patent application after the creation of the invention. The procedures for the application will be in principle performed by the company which is the collaborative researcher, and the expenses for the procedures will be in principle also borne by the company. While implementation of a jointly owned patent is usually left to the discretion of each patentee mutually without any royalty in cases where all patentees are private companies, there may be cases where the University receives consideration from the joint-patentee company upon implementation of the invention by the joint-patentee company, since the University is not engaged in any corporate activity of manufacturing, selling or the like of a product by implementing the patent. In cases where implementation of the patent or an assignment of the share therein to the joint-patentee company takes place, a patent license agreement or an assignment agreement will be executed separately. Also, if a joint-patentee company does not exercise the right to implement the patent for not less than a certain length of time without any justifiable reason, the University can grant a license to a third party to prevent the technology generated in the University from being stockpiled without use. The University usually prescribes these matters in advance in a collaborative agreement or an agreement on the joint application for the patent.
Once a licensee or assignee of a patent (including an application before registration) is determined and this leads to the execution of a contract, compensation will be paid to the inventor from the residual amount of the income accruing under the contract after the deduction of technology transfer expenses, and the application and maintenance fees for that patent. The specific allocation is basically as follows:
For the avoidance of doubt, in cases where there are multiple inventors, the amount for the inventors will be allocated to each inventor according to his/her share.
*Pursuant to the amendment of the Kyoto University Regulations on Invention dated January 1, 2023, compensation upon application for a patent was abolished. Also, the methods for deduction of expenses and allocation of income were changed. Please check the website (internal access only) in relation to the change of the allocation rule.
If the preparation of the descriptions and the application is entrusted to an agent (a patent attorney office) for the filing of a patent application, the cost is approximately four hundred thousand yen (¥400,000) per case. Also, when translation or an entrustment to an overseas patent attorney office is requested for the filing of an overseas application, it costs approximately one million yen (¥1,000,000) per country. While the expenses to maintain a patent application are borne by the University, the income from the licensing of the patent held by the University is not enough to cover the application expenses for the hundreds of inventions internally notified across the University each year for the time being. Moreover, it is not necessarily appropriate for the University, which is not a profit-making institution, to operate with the sole purpose of increasing future patent income. To establish a system as a knowledge hub in which rights for inventions of researchers are acquired and such inventions are returned to society, certain financial resources for patent applications should be ensured by not relying solely on patent income. The Policy on Industry-Government-Academia Collaboration was approved in March 2004 in Kyoto University, pursuant to which it was determined that an overhead fee of ten percent (10%) would be received from collaborative research with a private entity or the like, and such overhead fee will be collectively administered in an effective manner as expenses to be used for patent applications and as operating costs.
Some researchers may wish to start a venture business using a technology developed by themselves. In that case, the inventor may think it unreasonable to be obliged to pay a royalty, the same as licensees outside the University, under a license agreement executed with the University in order to use the invention created by such inventor in the venture business just because the patent is owned by the University. In cases where a venture company in which an inventor is involved originates from the University, and wishes to implement an intellectual property right subject to such license, Kyoto University will consider granting a license with the appropriate conditions, taking into account that it is the research results generated from public funds while paying attention to any conflict of interest.
If an inventor or another person has found that a third party is implementing (by manufacturing, using, selling or the like) a patented technology in the course of trade for which an application was filed by Kyoto University, please inform the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation about it.