Technology Licensing Section
Scientific research, the primary mission of OIST, has the potential to generate new ideas, processes, materials, and devices, which may benefit society as well as OIST. These assets should not be locked away in laboratories or in the pages of academic journals. The Technology Licensing Section (TLS) works together with both researchers and industry to form a bridge from the laboratory to the market, to make the benefits of OIST research available to society.
Technology Licensing Section is responsible for managing and commercializing intellectual property. Our main roles are:
- Patenting inventions derived from research results to protect the rights
- Managing intellectual property including patents
- Commercializing patented inventions
- Negotiating research agreements with industry
Patenting inventions derived from research results
The patenting process starts when researchers contact us to talk about inventions. We have a document called the “Invention Disclosure Form” for researchers to describe what inventions they made and how the inventions can be used. Results of great scientific achievement are not necessary patentable inventions. Furthermore, even among patentable inventions, potential for commercialization is a critical point to consider. Therefore, we hold a committee (“Invention Evaluation Committee”: PRP Chapter 14) to evaluate whether an invention can become a patent (patentability, which requires novelty, non-obviousness and utility), and whether the patent will contribute to commercializing a product(s) or service(s) (marketability). Only when OIST decides to apply for a patent on the invention as the result of the committee decision, we file a patent application with help from external patent attorneys.
Managing intellectual property such as patents
Just filing a patent application does not secure the right to use the invention exclusively. Only after approval by examiners in the Patent Office will patent be granted. Before that happens, the invention is in the state termed “patent pending”, which means the patent application has been filed, but it is not sure whether the patent will be granted. For a pending patent, we need to file an application for prosecution (non-provisional application for US Provisional Application). Technology Licensing Section takes the necessary steps to validate the right of filed inventions with help from inventors and patent attorneys. After such filing in Japan or the U.S., we further file PCT applications to enable patenting in diverse countries under the PCT agreement. PCT application opens up the door for OIST to reserve rights in key marketing countries. We're also responsible for maintenance of obtained patents including annuity payment.
Commercializing patented inventions
The process to license a patented invention starts with discussing how to use the invention and planning a strategy with the inventor for licensing it. Based on the strategy, Technology Licensing Section searches for companies that can implement the invention. Depending on the nature of an invention, we also consider the possibility of commercializing the invention by the inventor him/herself in the form of spin-offs. When licensing succeeds, revenue will be provided both to the inventor and OIST. It is important but difficult to negotiate with licensee companies to obtain reasonable license agreement. In some cases, OIST and the potential licensee company cannot come to an agreement. In such cases, negotiation could take long or break down. Technical and legal knowledge are required for negotiation. Technology Licensing Section negotiates for contracts using our network of external experts to protect and maximize the benefit to inventors and OIST.
Other negotiations with industry
Technology Licensing Section is also responsible for Material Transfer Agreements, and Non-disclosure Agreements with industrial partners. Intimate knowledge and experience related to OIST policies and legal matter of academic-industry agreements are necessary to negotiate with companies for these matters. Even for a Material Transfer Agreement with a university, if the material you receive is expected to be related to a patent application in the future, please contact us.
The mission of the Technology Licensing Section is to patent inventions developed at OIST and to apply them for the benefit of society, while generating revenue to support further research and education at OIST. Although the achievement of the Technology Licensing Section can be measured in direct financial terms, there are less tangible but equally important benefits, including:
- Contribution to society by creating and fostering new industries from knowledge being made by the great minds of OIST
- Creating new industries and jobs for the development of Okinawa
- Strengthening the connection between the university and the private sector
- Providing training opportunities through exchange programs between OIST and industry
The Technology Licensing Section would like to be a bridge between OIST researchers and industrial partners to help create knowledge that could benefit society for next generations.