Big in Japan: Riken and patents

Founded in 1917 Riken, an abbreviation of Rikagaku Kenkyūjo (in English, the Institute of Physical and Chemical Research), is one of the largest scientific research institutions in Asia, with around 3,000 scientists working across Japan on research into everything from radioactivity to genomics. It is an independent administrative institution under the jurisdiction of Japan’s Ministry of Education, Culture, Sports, Sciences and Technology, and most of its funding comes from the Japanese government.

As part of its status, Riken is exempt from corporation and income tax, though tax is payable on profit-making operations. On the intellectual property side, Riken enjoys half price examination and renewal fees at the Japan Patent Office (JPO); these reductions must be requested every time the institution applies for a patent.

Akihiro Fujita is the director of the institute’s research cluster for innovation. The cluster has among its responsibilities the transfer of Riken’s scientific achievements into commercial projects in partnership with the private sector. “In traversing the long road between Riken’s basic research and the development into commercial applications, development and funding by private industry is essential,” he says.

“Even after a viable application has been found, a partner in the private sector needs to have a monopoly on the technology for a certain period of time if it is to effectively continue its business operations.”

That said, one of the advantages for researchers at Riken is the wide-ranging support provided by the institution in securing and maintaining IP rights. “Because the IP rights belong to Riken rather than the individual inventor, the professional staff (patent attorneys and IP specialists from the private sector) in Riken’s IP departments can act to protect the rights of the individual inventor, carry out the necessary application procedures with the JPO, and negotiate with interested private corporations,” Fujita says.

“This alleviates much of the burden on the individual inventor and allows the inventor to concentrate on research that will lead to new sources of IP. For technology transfer purposes as well, it is better for the organisation to hold the IP rights, particularly because private corporations generally prefer to enter into contracts with incorporated entities rather than individuals.”

Additionally, Riken is sometimes required to secure IP rights by individual inventors, for example when IP rights are a key factor for external funds. And, as Fujita says, “IP rights are also a factor in judging a scientist’s record of achievement.”

So what does the IP landscape look like at Riken? In the five years to 2012, Riken filed 762 domestic patent applications and 715 overseas applications. At the end of 2012, it held a total of 678 granted domestic patents, and a further 615 from abroad. Like many such institutions, the numbers filed decreased between 2008 and 2011, but in 2012 numbers increased towards pre-crash highs.

“With its patenting efforts firmly in place, Riken has seen several inventions go on to achieve great success in recent years.”

Riken’s technology transfer office sits in the collaborations division of the research cluster. It is staffed by a mixture of lawyers, PhD-holders, individuals formerly involved in technology transfers in private industry, former trading company employees and former corporate legal division employees. Despite the level of expertise the office can call on, mistakes have been made, and Fujita is conscious of the need for accuracy.

“Riken is well aware that errors must not be allowed in managing IP, and we have reinforced our administrative structure as necessary over the years. Even so, we have, on rare occasions, made a mistake, such as publicising an invention before its patent application date,” he says.

“As a public research institution, Riken has an obligation to publicise its research achievements. It is also important for our researchers to make their findings public at the earliest opportunity, whether through publication or through presentations at academic meetings and the like. At the same time, patent applications must be made before an invention is publicised.”

Inventors are often more concerned with the date on which an invention is announced or the publication date for a research paper. As Fujita says, one of the tasks of the technology transfer office is to coordinate that announcement and the patent application date.

“Sometimes the abstract of presentations made at an academic conference is published before the researcher’s patent application is processed, even though the patent application was made before the presentation,” he says. “There was also a case in which an external agency publicised on its website an invention by a researcher funded by the agency before the researcher had a chance to file a patent application.”

With its patenting efforts firmly in place, Riken has seen several inventions go on to achieve great success in recent years. One example is Karigreen, a low toxicity insecticide developed by Yutaka Arimoto (currently head of the Arimoto Laboratory in the Riken Innovation Center) as part of the laboratory’s SaFE (Safe and Friendly to the Environment) agricultural chemical series. It is used worldwide to protect such crops as grapes (for wine), strawberries, and cucumbers from disease and pests.

Other successful work includes the invention of Vaam, a fat-burning sports drink and the discovery of element 113, provisionally called japonium, a ‘superheavy’ element discovered using the Riken LinAC (RILAC) linear accelerator and a novel nuclei separator.

Although most of Riken’s work is focused on Japan, it has also developed successful partnerships with research institutes abroad. Fujita says there are more than 330 such partnerships with institutions in Japan and overseas. “In principle, the IP rights arising out of these collaborations are shared with our partners, with the proportion of responsibilities and costs, as well as licensing, decided through mutual agreement,” he says.

The JPO is the third busiest office in the world in terms of patent filings per year, after the US Patent and Trademark Office (USPTO) and China’s State Intellectual Property Office. The vast majority of patents filed with the JPO come from domestic companies and institutions, which is not the case at the USPTO or the European Patent Office. It’s indicative of a thriving climate of domestic innovation, and Riken is a standard-bearer for that effort.