The current status of handling of students’ intellectual accomplishments in Japan

(IPRinfo 1/2007)
Yukiko Nishimura
Assistant Professor, the University of Tokyo

In April 2004, all the Japanese national universities were incorporated. Until then, they had been regarded as part of the government. Now their management system became underpinned by the idea of autonomy and self-responsibility. They are expected to be more efficient. In addition to the annual evaluation of the performance of each university, their efficiency of management is evaluated every 6 years.

The system of higher education in Japan had begun to change during the 1990’s. The competition for government subsidy had become harder, and the challenges for knowledge-based economy also caused changes in research and education programmes.

The incorporation triggered a major change. One of the most drastic changes they experienced is the ownership of intellectual property.

The Technology Licensing Organizations
Figure 1 is a flow diagram of intellectual achievements at Japanese national universities before the incorporation. In fiscal year 2002, Japanese universities had 3,832 inventions in total. Among them, 682 inventions were government-owned (accounting for 17.8%), and 3,150 inventions (82.2%) belonged to the inventors themselves.

In 1998, the Law Promoting Technology Transfer from Universities to Industry (so-called Japanese Bayh-Dole Act) was enacted. The Act makes it possible for intellectual achievements created at universities and research institutes to be transferred to industries through Technology Licensing Organizations (TLO).

Since that time, some intellectual achievements such as inventions originally owned by the inventors were patented by TLOs, based on the assignment agreements allowing the inventions to be transferred to the relevant industries eventually. The inventions not owned by the government were patented by the companies as a research partner.

Under these circumstances, universities did not realize what was happening with the inventions and patents obtained as a result of their faculties’ efforts, nor could they utilize such patents strategically at their own discretions.

After the incorporation, university IP is increasing
This situation drastically changed in April 2004. The National University Corporation Law provides that national universities shall promote to spread and utilize their research results . This law clarifies the university’s significant responsibility to create intellectual achievements and to focus on making the most of such achievements.

Concerning the ownership of intellectual property at universities, MEXT (the Ministry of Education, Culture, Sports, Science and Technology) encourages the universities to handle and utilize their intellectual property according to their own policies, following the principle of institutional ownership – in view of the conventional insufficient utilization of intellectual achievements under inventors’ ownership, the recent development of the system and the incorporation of the national universities. In the previous year July 2003, MEXT determined the implementation of ”University’s IP Headquarters Improvement Project” for 33 universities and one institute. The aim of this project was to promote universities’ development contributing to society by the use of their intellectual property.

Under such policies and measures, the basis of the intellectual achievements is the principle of institutional ownership after the university’s incorporation. Figure 2 is a flow chart of the handling of intellectual achievements after universities’ incorporation.

As the result, the number of universities’ intellectual achievements is smoothly increasing after the incorporation. If we compare the incorporated national universities’ industry-university collaboration and technology transfer in 2005 to the performance in 2001, the number of inventions has grown 2.5-fold; the number of patent applications is 15.5-fold, the number of licensing is 15.8-fold, and the licensing profit has more than doubled.

More facilitated transfer of university’s intellectual achievements is to be expected. The formulation of the rule of handling of university students’ intellectual achievements (regardless of their degree) is in progress. There is, however, a long way to go to establish an ideal system for the handling of such achievements.

A student can be the key figure in a research project
The following is the case that actually happened before university incorporation.

Professor A’s laboratory at the engineering department of a national university and Company B had been research partners by contract since 2001, to be involved in the development of algorithm available for the Company B by using the company’s internal data.

Professor A supervised Researcher C, who joined the laboratory in his final year before graduation to implement this research. It took 3 years from his involvement with this research activity to accomplish a successful result. Company B eventually determined to adopt his accomplishment.

At this point, Researcher C got a job in another company working in the same industry as Company B. There were neither researchers who would have had enough expertise equal to Researcher C, nor a system to transfer in the laboratory Researcher C’s know-how for the research project. Consequently, the laboratory was forced to assign a graduate student with much less expertise than Researcher C to start the same research all over again under the renewed contract between Professor A and Company B.

This case clearly shows the student’s actual performance contributing to the successful research results rather than Professor A’s initiative as a project leader. This kind of research system relying heavily on students is typical in Japan.

In such a situation, we should say that research results are actually realized not only by individual faculties but also by their laboratory workers. In this case, there are no specific rules for taking over the existing research activities in the laboratory. Considering Researcher C’s distinguished expertise, it would be very difficult to maintain the same level of the research results for the following year and thereafter.

Furthermore, due to lack of professor’s instructions, the students, including Researcher C, do not know the contract details, especially the clauses concerning their duty of confidentiality. Therefore, there is a possibility of disclosure of the company B’s classified information through Researcher C.

The company continues the collaborative research contract with trust in Professor A and his students, but possibly without their knowledge about the laboratory’s reality. The review of protection and handling of students’ intellectual achievements is a significant issue to be acknowledged and dealt with at the university side. Actually, an increasing number of students is listed as the inventors for university’s patent applications.

”IP harassment” of students
Compared with the review of handling of faculty’s intellectual achievements, the relevant discussion has started relatively slowly. Universities have given the priority to their faculty’s achievements with their official responsibility. This way of thinking had to be reviewed first at the time of university’s incorporation.

Students paying their tuition fees do not always have employment relationship with universities, and they will graduate or discontinue their relationship with universities in some other way. The handling of students’ intellectual achievements is currently being reviewed.

Relating to the ownership of intellectual property at the stage of the completion of a student’s intellectual achievement, the problems are far from having ended. Students (especially postgraduate students) desperately devote themselves to research activities, pursuing a master’s/doctor’s degree, to eventually get a job after their graduation.

Some students are forced to give up their status as an inventor at the time of patent application under the pressure of the project leader who is in most cases their supervisor. Such delicate cases are not reported to university’s IP headquarters and TLOs. We could call such issues ”IP harassment”.

The officials involved with a university’s IP management should recognize the reality of IP harassment and make an effort to facilitate industry-university collaboration and technology transfer. Some universities provide a guidance regarding the handling of intellectual achievements depending on the respective departments’ situations. Such a measure is very useful for the improvement of awareness of students without knowledge of intellectual property as well as that of faculties engaging in research activities.

Under the current situation where each university can flexibly build their own system, universities should improve their research environment that enables young researchers to enthusiastically do their research with confidence, which will eventually lead to the university’s organizational revitalization. The handling of intellectual achievements realized by a laboratory in cooperation with students as well as faculties as a unit is to be discussed more extensively in the future.

Share: