Japan is establishing clearer guidelines on intellectual property rights for university researchers to ensure effective transfer and utilization of research results, addressing challenges in IP management and national-security concerns.
The Japanese government is taking steps to establish clearer guidelines on intellectual property rights for university researchers who change jobs or retire. In a move led by the Cabinet Office’s Intellectual Property Strategy Promotion Bureau, the government aims to ensure that valuable research results are effectively transferred and utilized, rather than being lost or stalled due to administrative hurdles as scientists transition between institutions.
A panel of legal experts and academics have been brought together to analyze key issues surrounding IP management when researchers move between universities, national research institutes and startups with the goal to promote smooth transitions and prevent disputes over patent ownership, which can hinder the commercialization of cutting-edge technologies.
The initiative comes amid growing concerns that unclear policies on IP ownership could disrupt research progress and slow the commercialization of groundbreaking innovations. Universities and national research institutes play a crucial role in Japan’s technological advancement, making it imperative to strike a balance between career mobility and research continuity.
A government study presented to the expert panel showed that only 30 percent of Japanese universities currently have clear regulations on IP ownership when researchers switch employment or retire. In addition, researchers have expressed concerns that they were unable to retain the necessary rights to continue their work after moving to a new institution. Differences in policies between public and private universities have also led to complications.
— A battle for retina-transplant cells —
According to an IP strategy bureau official, a battle launched in 2021 over iPS cell-related patents for treating eye diseases was a key incentive in launching the discussion over the issue of academic IP ownership — which officials and experts agree, is not just complicated policy-wise but also often fraught with the complexities of human relationships.
A former researcher at the publicly funded RIKEN research institution, and her company, sought a ruling from Japan's Ministry of Economy, Trade, and Industry, or METI, over iPS cell-related patents for treating eye diseases.
The researcher was one of the inventors but transferred the patent right to RIKEN. The patent listed RIKEN, Osaka University and a biotech company. Despite her involvement in pioneering the treatment, she faced delays in commercialization due to disagreements with rights holders — and after unsuccessful negotiations, filed for the compulsory use of the patents.
It was the first time that METI deliberated on a compulsory license, which under Japan’s Patent Act Article 93(2) can be granted by the ministry when necessary to the public interest.
In 2024, a settlement was reached, allowing her startup to use the patents for specific treatments, but according to the Nikkei newspaper, METI’s discussions over public benefit and patent use remained largely hidden behind closed doors.
— Addressing key challenges —
The panel of experts highlighted the challenges of determining ownership of research findings when academics move between institutions — especially given the fact that IP-ownership disputes often stem from strained personal relationships.
Experts also raised concerns about the potential for IP disputes, particularly when former colleagues continue working on similar projects. Ensuring fair recognition for students and co-researchers in patents was also emphasized as an essential issue to address in order to maintain collaborative and productive research environments.
To address these concerns, the panel is exploring multiple policy models, including full or partial transfer of IP rights between institutions, shared ownership agreements and scenarios where rights could revert to the researcher under specific conditions. Officials are also considering the creation of a national database to better track and manage research-related IP assets.
— Global practices, national security —
Japan’s efforts to refine its IP policies are being informed by international practices, particularly from the US. The IP promotion bureau reported to the panel its findings on IP management in US academia, highlighting retention and licensing agreements, standardizing inter-institutional agreements, data and asset management and access, and background checks and exit procedures.
National-security concerns were also flagged as part of the discussion about researchers crossing borders.
The Bayh-Dole Act in the US and in its Japanese counterpart, plays a significant role in addressing concerns over sensitive technologies or data developed through publicly funded research and transferred or accessed by foreign entities.
Under Japan's version of the law, universities and national research institutes that receive federal funding have the right to choose the ownership of patents resulting from commissioned inventions. They are obligated to strive for social implementation of these inventions, with specific regulations regarding the assignment of rights and compensation.
By allowing universities and research institutions to retain ownership of inventions developed with federal funding, the law encourages the commercialization of research while maintaining oversight through specific conditions, such as the requirement for government approval before transferring IP rights, ensuring that any transfer aligns with national-security interests.
It also mandates that the government can obtain a license to use the technology for public interest, which can include national-security purposes.
The panel is expected to release policy recommendations in March, with the results of deliberations to be publicized later that month in an effort to provide universities and research institutions with a structured framework for managing IP rights.
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