Intellectual property management and licensing …apctt.org/nanotech/sites/all/themes/nanotech/pdf/Dr...WIPO GREEN Project, Japan Intellectual Property Association (JIPA) 27/10/2014

WIPO GREEN Project, Japan Intellectual Property Association (JIPA) 27/10/2014

Creating IP Vision for the World

Intellectual property management and

licensing strategies in open innovation –

Lessons from the system construction of

WIPO GREEN – the Sustainable Technology Marketplace

27th October 2014, Kuala Lumpur, Malaysia

Regional Open Innovation Forum on Promoting Nanotechnology and Agriculture

for Sustainable Development

SESSION I: Open innovation for sustainable development

Yorimasa Suwa, Ph.D., MBA Deputy Learder, WIPO GREEN Project, Japan Intellectual Property Association

(JIPA)

Senior Manager, Corporate Strategic Technology , Intellectual Property

Department, TEIJIN Ltd.

1



Agenda

1. Brief introduction of Japan Intellectual Property

Association (JIPA)

2. What is Intellectual Property? How to monetize

Intellectual Property?

3. Discussion on Intellectual Property for Green

Technology

4. Introduction of WIPO GREEN as a new mechanism for

accelerating Green technology transfer

5. Current issues and future scope for WIPO GREEN and

the Utilization of Intellectual Property for

developing countries

2



Agenda


Association (JIPA)




Technology






3



Japan Intellectual Property Association

(JIPA)

Established in 1938 and has a history of 75 years.

Non-profit, non-governmental and largest IPR Industry

Organization in the World.

As of May 2014,

– Number of Regular members: 932

– Number of Associate members: 334

Objectives

– The Association aims at contributing to the business of its

Members by endeavoring to make full utilization of

intellectual property systems and to improve them.

– It also aims at contributing thereby to the sound progress

of technology and development of Japanese industry.

4



JIPA Website and Newsletter

5

http://www.jipa.or.jp/english/index.html

JIPA Newsletter

- IP Message from Japan -

News of JIPA International Activities.

(planning to start in summer of 2013)



Agenda


Association (JIPA)




Technology






6



What is Intellectual Property?

7

Creations of the mind:

2. Copyrights

1. Industrial property

• patents (inventions)

• utility models

• trade secret

• trademarks

• industrial designs

• geographic

indications

• new plant varieties

IP Assets

Ref. Yumiko Hamano 2010



What is Intellectual Property?

Traditionally, people focus only on registered IP

as assets capable of monetization

Patents, trade marks and designs are all

significant assets capable of monetization, but…

These may not be the only – or most significant –

IP assets you/your company has

Technical specifications, test data, databases,

software, and even know-how is capable of

monetization

8

Ref. Metis Partners 2014



How to monetize Intellectual Property? Licensing

Spin-Out

Sale to 3rd Party

Direct-to-market

- Things to consider:

What is your future involvement in the commercialization of

the invention?

Is the innovation a one-off or part of a portfolio of inventions?

What is the potential market for the idea?

9

Ref. Metis Partners 2014



Agenda


Association (JIPA)




Technology






10



Discussions on IPR relating to Environmental

Sound Technologies (ESTs)

From 1990s, some of the developing countries had raised

the opinion in that the Intellectual property rights owned

by developing countries had been the barrier of the green

technology transfer from developed countries to

developing countries at the discussions in Conference of

Parties (COP) of the United Nations Framework

Conversation on Climate Change (UNFCCC).

However, these criticisms on the IP rights are not correct

as considered from the following reasons.

- In most cases, patent applications have not been filed in

developing countries.

- In contrast, in some of the emerging countries such as China

and India, a gross number of patens on green technologies are

owned by the residents of those countries themselves.

11



Discussions on IPR relating to Environmental

Sound Technologies (ESTs)

July 2011

At the Innovation and Climate Change

International Conference held in Geneva

Mr. He Yafei, Permanent representative of the

People’s Republic of China to the United Nations,

pointed out that technological innovation and

intellectual property related to benefit-sharing

in response to climate change play a key role.

November 2013

At the Official Launch of WIPO GREEN in Geneva

Mr. Dilip Sinha, India's Permanent

Representative of India to the United Nations

spoke that WIPO GREEN is to accelerate

innovation and diffusion of green technologies

and contribute to the efforts of developing

countries in addressing climate change.

12

The world surrounding IP for green technology has been changing.



Agenda


Association (JIPA)




Technology






13



Collaboration of JIPA and WIPO

14

1992 UNFCCC adopted： ‘Technology Transfer Promotion’

Kyoto Protocol adopted GHG reduction > 5% against 1990 1997 COP 3

2007 COP13 Bali Action Plan

2010 COP16 Technology Mechanism for development and transfer

2013 COP19 Technology Mechanism under discussion

“Not patents, but technology pack for transfer” “IP based solution for global issues”

JIPA WIPO Food Security

Climate Change

Healthcare

WIPO GREEN

Since 2010, Joint Project to build global technology matching scheme



WIPO GREEN Official Launch (28th November 2013)

H.E. Ambassador Dilip Sinha,

India, Mr. Francis Gurry,

Director General, WIPO, and

Mr. Takeshi Ueno, President,

JIPA (From left to Right) took

the rostrum.

Video messages from Ms.

Cristiana Figueres, Executive

Secretary of UNFCCC, and Mr.

Achim Steiner, Executive

Director of UNEP, on their

expectation toward WIPO

GREEN as one of the

solutions for the climate

change.

15



Concept of Green Technology Packaging

Platform (GTPP)

16



Comprehensive Image of WIPO GREEN

17

Database

Network



Principles of WIPO GREEN

Transparency: WIPO GREEN, as a global repository of

technologies, best practices and analyses, contributes to a

more open market.

Partnerships: WIPO GREEN brings together the public and

private sectors on a voluntary basis to facilitate

collaborations and accelerate investments.

A comprehensive understanding of needs: WIPO GREEN

offers a space for publicizing needs, allowing interested

parties to respond to and offer solutions.

IP rights: WIPO GREEN encourages the exchange, sale and

licensing of technologies and their associated rights.

Agreements that originate through the use of the WIPO

GREEN are the responsibility of the contracting parties.

18



WIPO GREEN Website https://webaccess.wipo.int/green/

19

About 1,000 items of technology seeds

have been registered.

Network is composed of Partners and

Users(Tech Providers, Tech Seekers,

Service Providers).

About 50 various types of organizations

have registered as Partners.

Database

Network



An example of technology information in WIPO GREEN Database

20

Contact to

provider

Up to 20

image files

can be

attached.



WIPO GREEN Database:

Number of technology seeds (As of October 2014)

Total number of uploaded technologies 1,254

Categorized on IPC Green Inventory

– Administration, regulatory and design aspect 44

– Agriculture and Forestry 133

– Alternative energy production 1,125

– Energy conservation 196

– Transplantation 53

– Waste Management 396

Exｔracted with keyword search

– Nanotechnologies 32

21


Creating IP Vision for the World Partners: Core of WIPO GREEN Network

22

Partners shall agree with WIPO GREEN Charter and clarify their contributions to WIPO GREEN.

from developed countries from developping countries



Business Transaction Flow

23

B Co.

Tec. Acceptor Tec. Provider

Inquiry, Response and More Detail Information

Direct Negotiations

⇒ Deal Closed

Setting of Technology

Name / Field

A Co. Use of

Contact Form

⇒ E-mail

WIPO Green Data Base

Setting of interested

technology field

Registration of

Needs Information

Viewing of

Technology Information

Registration of

Technology Information

Viewing of

Needs Information

First Contact

Report

WIPO Office



Technology Transfer Example ( B to C )

24

Bio fuel plant sales

Tech. transfer

Government

Fund

PO Operation system

Fermenting vessel

Enzyme

Control software

Local contents (service, parts)

Tech. transfer for local contents

Global competition： In order to reduce CO emission, natural energy power production,

recycle goods or clean air, product or plant sales are not enough. Even in case of plant

transfer in a turn key arrangement, Customers tends to ask for local contents for

components or facilities, involving local companies, or disclosure of certain technical

information. With or without of licensor’s intention, partial technical transfer may be

required to reduce price quotation, In order to win bidding processes.

Tec. Acceptor Tec. Provider



Technology Transfer Example ( B to B )

25

C co.

Tech. information

negotiations

A Co.

deal ⇒

B Co.

1st Tec. Acceptor

Tech. transfer

Product, service

Value added

WIPO-Green

Data base

Tech. transfer

B to B arrangement may be applicable when to use WIPO Green DB:

In general universities, research institutes or SME may not have resources to run cross

border technology transfer businesses due to lack of experiences, human resources.

Even a corporation may terminate any projects or technology development due to

strategic reasons. Any such technologies may be listed in WIPO Green DB for possible

transfer in B to B arrangements. 1st licensee may add its own value to the transferred

technologies.

2nd Tec. Acceptor Tec. Provider



Agenda


Association (JIPA)




Technology






26



Current Issues and the future scope of

WIPO GREEN

Following three issues seem to be most important.

How can we know real needs in developing

countries?

How can we connect various types of members to

realize the transfer of ESTs?

How to share the value and benefit from IPR

systems between developing and developed

countries?

27



How can we know real needs in developing

countries?

There has been only a few registration of needs in DB.

⇒ Needs are quite specific to each geographical area and

easily changing with time and government regulations.

Human network and the systems should be constructed.

⇒ Concurrent exchange of opinions of the skilled persons

(Engineers, Technology consultants, Funding advisors, etc.

in the developing countries)

Technology seeds information in the developing countries

are also the technology needs information.

⇒ case studies of “Reverse Innovation” and the

activities of academics, such as D-Lab in MIT and O-Lab of

SUTD, can be useful examples

28



How can we connect various types of

members to realize the transfer of ESTs?

The active value chain of technology transfer should be

constructed.

⇒ Not only technology providers and acceptors, but also

providers for supporting service.

Organizations of various types must work together, such as

public sector, private sector and nonprofit sector.

⇒ Factors described in “Social Marketing”(Kotler, 2010)

should be considered.

- Agreement on common goals

- Clear roles and responsibilities

- Mutual respect and appreciation

- Negotiation and compromise

- Open communication

- System for accountability

29


Creating IP Vision for the World How to share the value and benefit from IPR systems between developing and developed countries? I believe this is the final goal of WIPO GREEN.

From the aspect of “Reverse Innovation”, the innovation in

developing countries can transform global markets, as

Govindarajan (2012) described, .

⇒ IPR system will be beneficial not only for the industries

in developed countries, but also for the innovators in

developing countries.

There may be the points that the IPR system itself should

be modified as Kaskus (2012) suggested.

⇒ For example, patenting conditions, such as the

differentiation of patent terms.

30

Ref. Yumiko Amano, 2012

WIPO Regional Forum in Colombo, SriLanka

Ref. Vipin Kumar, 2014

ESCAP Regional Dialogue in Pattaya, Thailand



Japanese Companies who have registered their technologies to WIPO GREEN Database (as of October 2014)

Honda Motor Co., Ltd. Hitachi, Ltd FUJITSU LIMITED TEIJIN LIMITED JGC Corporation Panasonic Corporation Sony Corporation SHARP Corporation IHI Enviro Corporation Swing Corporation

Waseda Environmental Institute Rural Environment Research Association Quantum Design Japan, Inc. Seabell International Co., Ltd. Technoplan Inc. Jtop Co., Ltd.



MSABP™ Multi-Stage Activated Biological Process Wastewater Treatment System

Developed by TEIJIN in Japan and

China.

Based on a revolutionary process in

which a biological carrier provides

immobilization of microorganisms in

a multi-stage aeration tank.

Sludge-less, so greatly reduced

sludge disposal cost.

40

MSABP™ is a

registered trademark

of Aquarius

Technologies Inc.(US)

Copyright TEIJIN Limited



ECO CIRCLE™ PET Fiber Recycling System

Established by TEIJIN in early

2000’s first in the world.

Circulating type recycling

system for polyester products.

Currently developed in China

through one of partnerships

between the China Chemical

Fibers Association (CCFA) and

TEIJIN.

41 Copyright TEIJIN Limited



WINTRAY High-Throughput and High-Efficiency Extraction Column System

42

Developed by JGC Corporation

Copyright JGC Corporation



Photocatalyst titanium apatite technolgy Developed by FUJITSU LIMITED in collaboration with the University of Tokyo.

Photocatalytic material, in which a part of calcium ions in apatite crystals

are substituted by titanium ions.

Advantages

・ Has similar photocatalytic properties of the conventionally used

photocatalyst titanium dioxide.

・ Has the same structure as hydroxyapatite, which is included in bones, and

is highly effective at adsorbing organic materials.

・ Shows inactivating effect against viruses, microbes, and allergens, even in

dark condition.

43

Copyright 2014 FUJITSU LIMITED



ULV, Ultra Lightweight Vehicle Developed by Waseda Environmental

Institute.

Effectively utilized in the suffered

area of the huge earthquake in the

east Japan in 2011

44 Copyright Waseda Environmental Institute



STREAM: Ultra Low Head Hydro Power System

45

Developed by Seabell

International Co., Ltd.

Easy installation, Simple utilizing

Water Current

Renewable Energy 24 hrs,365

days

Does not Require Dam or Penstock

Broad Range of Application

Copyright Seabell International Co. Ltd.



Registration of technology seeds in WIPO GREEN Database

46

Technology features

Effects

Developmental status

Intellectual property

Condition for use

Additional information

Title*

Descriptions*

Technology Field*

Summery of Befits*

*mandatory



Current Issues and the future scope of

WIPO GREEN

Toward the effective system for Green Technology

Transfer in the future:

Currently, members of Partners in WIPO GREEN

are making efforts together as 4 working groups.

(Database, Needs, Communication and Finance)

JIPA is continuously focusing on the networking

activity of WIPO GREEN.

We strongly hope more organizations from Asia

will join WIPO GREEN Network, not only for North

to South green technology transfer, but also for

Packaging of green technologies between both of

the South and North countries.

47



Thank you for your attention. [email protected]

48

For more details of WIPO GREEN, please refer to my article published on Techmoniter).

http://www.techmonitor.net/tm/images/5/59/13oct_dec_sf1.pdf

Documents

Intellectual property management and licensing …apctt.org/nanotech/sites/all/themes/nanotech/pdf/Dr...WIPO GREEN Project, Japan Intellectual Property Association (JIPA) 27/10/2014