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Fulfilling the Promise of Technology Transfer

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Ful fi lling the Promise of Technology Transfer

Koichi Hishida Editor

Ful fi lling the Promise of Technology Transfer

Fostering Innovation for the Bene fi t of Society

Editor Koichi Hishida Director-General Headquarters for Research Coordination and Administration ProfessorDepartment of System Design Engineering Faculty of Science and TechnologyKeio University 2-15-45 Mita, Minato-ku Tokyo 108-8345 , Japan

ISBN 978-4-431-54305-3 ISBN 978-4-431-54306-0 (eBook) DOI 10.1007/978-4-431-54306-0 Springer Tokyo Heidelberg New York Dordrecht London

Library of Congress Control Number: 2013932549

© The Editor(s) (if applicable) and the Author(s) 2013 . The book is published with open access at SpringerLink.com. Open Access This book is distributed under the terms of the Creative Commons Attribution Noncommercial License which permits any noncommercial use, distribution, and reproduction in any medium, provided the original author(s) and source are credited.All commercial rights are reserved by the Publisher, whether the whole or part of the material is concerned, specifi cally the rights of translation, reprinting, re-use of illustrations, recitation, broadcasting, reproduction on microfi lms or in any other way, and storage in data banks. Duplication of this publication or parts thereof is permitted only under the provisions of the Copyright Law of the Publisher’s location, in its current version, and permission for commercial use must always be obtained from Springer. Permissions for commercial use may be obtained through RightsLink at the Copyright Clearance Center. Violations are liable to prosecution under the respective Copyright Law.The use of general descriptive names, registered names, trademarks, service marks, etc. in this publication does not imply, even in the absence of a specifi c statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. While the advice and information in this book are believed to be true and accurate at the date of publication, neither the authors nor the editors nor the publisher can accept any legal responsibility for any errors or omissions that may be made. The publisher makes no warranty, express or implied, with respect to the material contained herein.

Printed on acid-free paper

Springer is part of Springer Science+Business Media (www.springer.com)

v

As one of the strongest economic stimuli to help Japan recover from the severe economic recession in the 1990s, the Japanese government took swift action in introducing various kinds of measures to effectively return university research results to society. This included establishment of the accredited technology licens-ing of fi ce (TLO) system in 1998 and the Japanese version of the Bayh–Dole Act in 1999. The Ministry of Education, Culture, Sports, Science and Technology (MEXT) also supported this trend by encouraging the establishment of intellectual property (IP) management of fi ces in universities (during the fi scal years 2003–2007) and promoting international university–industry collaborations and related activities (during the fi scal years 2008–2012). Through such processes, universities acquired a new function in addition to education and research enabling them to “return research results to society.” The revision of the Basic Act on Education in 2008, in which “returning research results to society” was clari fi ed as the “third mission” of a university, accelerated this historical change.

Ways to manage inventions have changed as well, from individual- to organiza-tion (university)-oriented management, and technology transfer of fi ces (TTO), which have come to play a central role in technology transfer activities by using the research results produced at universities. More than a decade has passed since the introduction of this new system, and each of these activities has become an impor-tant function of Japanese universities.

We at Keio University established the Intellectual Property Center in 1998 as an in-house organization. Since then, we have expanded our university–industry col-laboration activities. We have accumulated necessary patents derived from the uni-versity, promoted technology transfer, and supported the creation of start-ups based on IP and joint research. Various examples of successful licensing and start-ups can easily be provided, which implies that the process of “returning research results of universities to society” has already started to become more visible. University researchers interested in university–industry collaborations have also become well aware of the signi fi cance of having an effective IP management system to obtain competitive research funds, launch joint research projects in various industrial cir-cles, realize smooth transfers of technology, and establish start-ups. Moreover,

Preface

vi Preface

exchanging written agreements has become common in university–industry collaborations over the years. The result is that the qualities of maintaining transpar-ency, risk management, and compliance at universities have improved greatly.

Conversely, the expense of patent fi ling, prosecution, and hiring experts for tech-nology transfer at Keio University is much larger than that of licensing income—a case similar to that of other TTOs at other universities in Japan. Although it seems dif fi cult to change TTOs, regarded as “cost centers,” into pro fi t-making organiza-tions, stakeholders regard the university IP management system as important for promoting university–industry collaborations, creating start-ups and facilitating technology transfer. The fi nancial support provided by MEXT over the past decade is scheduled to fi nish by the end of fi scal year 2012. Now is the time for universities to consider how IP of fi ces should function at universities.

Against this backdrop, we held a symposium on September 28, 2012, at Keio University that focused on international university–industry collaborations. We looked back at our activities of technology transfer and university–industry collabo-rations and explored future prospects for the activities of our IP of fi ce and technol-ogy transfer. Under the title, “Role, Challenges and Perspectives of Universities and Public Research Institutes to Foster Innovation,” researchers and technology trans-fer and start-up experts from the USA, Europe, and Asia attended as speakers to share and exchange their knowledge and experiences.

This book aims to share the experiences and know-how discussed at this sympo-sium in a broad manner by using free electronic publication in addition to print publication. The book contains essays by Professor Kenichi Hatori (Keio), Mr. Takafumi Yamamoto (CASTI), Professor Robert Kneller (The University of Tokyo), Professor Yasuhiro Koike (Keio), Professor Hideyuki Okano (Keio), Dr. Benjamin Chu (UCLA), Mrs. Kirsten J. Leute (Stanford), Dr. Ruth M. Herzog (DKFZ), Dr. Christopher Wasden (PricewaterhouseCoopers), and Dr. Lily Chan (NUS), who attended the symposium, and also the speech of Professor Mark Spearing (University of Southampton), who spoke at the seminar held at Keio.

Universities are expected to play important roles in the creation and dissemina-tion of seeds of innovation for the future. To attain this goal, we need to leverage experiences of the past decade to fi nd an effective position for universities and ways to successfully collaborate with partner industries. It will be our great pleasure if people in universities, industry, government, and public institutes concerned with this issue fi nd this book useful in exploring powerful solutions and initiatives.

We would like to fi nish by expressing our greatest thanks to the writers for con-tributing chapters and cooperating in the editing process amid their tight academic and business schedules.

Tokyo, Japan Koichi Hishida Kenichi Hatori

vii

1 Technology Transfer from Keio University: Development of Professionals Fostering Innovation over the Past Decade ............... 1Kenichi Hatori and Koichi Hishida

2 Does Technology Transfer from Universities to Industry Contribute to Innovation? .................................................. 15Takafumi Yamamoto

3 Commercializing Promising but Dormant Japanese Industry–University Joint Discoveries via Independent, Venture Capital Funded Spin-Offs ........................................................ 23Robert Kneller

4 Realization of Photonics Polymer Technologies in the FIRST Program ............................................................................ 35Yasuhiro Koike

5 Translational Medicine of Stem Cells: Central Nervous System Regeneration and Modeling Neurological Diseases ............... 45Hideyuki Okano

6 Fostering Technology Transfer, Innovation, and Entrepreneurship from the Perspective of a Public University .............................................................................. 59Benjamin Chu

7 Fostering Innovation for the Benefit of Society: Technology Licensing’s Role at Stanford .............................................. 71Kirsten J. Leute

8 Managing Life Science Innovations in Public Research Through Holistic Performance Measures ............................ 83Ruth M. Herzog and Christopher Wasden

Contents

viii Contents

9 Universities as Engines of Economic Growth––Entrepreneurship in Academia: A Singapore Experience ......................................................................... 95Lily Chan

10 University Intellectual Property Exploitation: Personal Perspectives from the UK and USA ....................................... 101Mark Spearing

Biographies ...................................................................................................... 121