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Examples of Best Practices: Patent Information in Japan and the U.S.A.
 

Examples of Best Practices: Patent Information in Japan and the U.S.A.

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by Stanley P. Kowalski, J.D., Ph.D., Director, International Technology Transfer Institute (ITTI), Franklin Pierce Law Center, Concord, New Hampshire, U.S.A.

by Stanley P. Kowalski, J.D., Ph.D., Director, International Technology Transfer Institute (ITTI), Franklin Pierce Law Center, Concord, New Hampshire, U.S.A.

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    Examples of Best Practices: Patent Information in Japan and the U.S.A. Examples of Best Practices: Patent Information in Japan and the U.S.A. Presentation Transcript

    • Examples of Best Practices:
      Patent Information in Japan and the U.S.A.
      Stanley Kowalski
      Franklin Pierce Law Center
    • Patent Information in the U.S.A.
    • The Patent and Trademark Depository Libraries (PTDLs):
      A collaborative partnership with the United States Patent and Trademark Office (USPTO) for disseminating patent and trademark information in every state plus the District of Columbia and Puerto Rico.
    • The nationwide network of Patent and Trademark Depository Libraries (PTDLs) traces its beginning to the year 1871 when the United States Patent and Trademark Office (USPTO), then known as The Patent Office, first started distributing copies of patents to a small number of libraries.
    • Official Gazette, a weekly publication of the USPTO that lists patent abstracts and a representative drawing of the invention, started in 1872.
       
      It took an Act of Congress, 35 U.S.C. 13, to enable the Patent Office to start disseminating patent information to public.
    • PTDLs greater mission is to:
      • Disseminate Patent and Trademark Information
      • Support Diverse Intellectual Property Needs of the Public
    • In order to spur economic growth, business competitiveness, and the continued discovery of new scientific and technological knowledge and applications.
    • PTDL collections include:
      • current combinations of paper,
      • microfilm,
      • CASSIS DVD-RUM,
      • online, and
      • web-based resources.
    • At any given time, the USPTO’s Information Dissemination Organization(s) can be counted upon to provide the latest information search retrieval and storage system that ensures the widest possible access to United States patent and trademark information.
    • One requirement for becoming a PTDL involves identifying one librarian, the PTDL Representative, to serve as the liaison between the PTDL and PTDLP at the USPTO.
    • PTDL librarians guide inventors and other patent and trademark researchers through the patent and trademark search process. They teach patent and trademark research techniques to:
      • classes of students
      • inventors
      • small business owners
      • and various other audiences such as those at professional meetings and one-on-one sessions.
    • To become a Patent and Trademark Depository Library, a library makes a number of commitments that include:
      • acquiring a twenty-year back-file of U. S. patents;
      • providing free public access to patent/trademark depository materials;
      • protecting the integrity and availability of patent/trademark depository collections for use now and in the future;
      • maintaining collections of patent and trademark reference and search retrieval tools to support user inquires; and ……….
    • To become a Patent and Trademark Depository Library, a library makes a number of commitments that include (cont.):
      • assisting the public in the accurate and efficient use of patent and trademark information;
      • and supporting the continued training of a designated Patent and Trademark Depository Library (PTDL) Representative at every annual PTDL Training Seminar.
    • This compatibility and overlap in interests creates a synergistic working relationship between PTDLs and the USPTO that has resulted in the design, testing and implementation of various innovative patent and trademark search and retrieval systems in a variety of media and formats.
    • PTDLs also engage:
      • Providing patent and trademark instruction to students in elementary schools that do science fair projects or competitions on creative thinking.
      • Giving presentations at state and national independent inventor workshops, and meetings of small business owners.
      • Giving instruction on the use of patent and trademark literature to college and university students of chemistry, engineering, design, history of science, and technical writing courses, and …..
    • PTDLs also engage (cont.):
      • Giving presentations to librarians and information professionals at state and national meetings.
      • Presenting seminars on patent and trademarks to faculty and research staff at college, and universities.
      • Giving talks on the uses of the patent literature for collectors and hobbyists.
      • Giving patent and trademark presentations at state business fairs.
    • It is quite common for PTDL librarians to team up with USPTO staff in providing local patent and trademark training workshops.
    • Partnership PTDLs offer access to USPTO specialized services and products on a fee-for-service basis, in addition to the traditional PTDL services:
      • Assistance in accessing and using patent and trademark documents
      • Training on PTO databases
      • Access to the PTO web site
      • Public seminars
    •  Customers of Partnership PTDLs include:
      • Individual inventors
      • Patent attorneys and agents
      • Businessmen
      • Researchers
      • Entrepreneurs
      • Students
      • Historians
      • The general Public
    • PTDLP Seminar
       
      Each year the USPTO organizes a week-long program in March in Arlington, Virginia, open to librarians in the 86 Patent and Trademark Depository Libraries across the USA.
       
      The program is designed to update the librarians with the latest relevant developments in USPTO policy, law and practice. It also provides them with hands-on training on USPTO database and systems that they access and use in working with their customers.
       
      PTO’s Inventor’s Assistance Program and the editor of Inventor’s Digest. The libraries’ outreach program for inventors’ groups, schools and small businesses are often extensive.
       
      PTO deals with invention firm scams.
    •  
      In the face of the popularity of web-based searching, some may be tempted to question if there is still any need for PTDL services as we have known them for several decades now.
       
       
    • Patent searching is a complex process that cannot effectively be reduced to simple keyword searching. Without the search expertise of a qualified patent search librarian or expert, implications of the outcome of a search are most likely not carefully reviewed or followed through by the novice searcher.
    • In other words, more to patent searching than surfing the internet .….
    • Patent Information in Japan
    • Sources of Japanese patent information:
      Japanese language sources:
      • Official gazettes
      • The industrial property digital library
      • Patent Online Information System (PATOLIS)
    • Sources of Japanese patent information, English language sources:
      • EPIDOS-INPADOC represents one of the most comprehensive sources for Japanese patent family information in a western language. The database is available via commercial hosts like Dialog, Questal Orbit or STN, as well as PATOLIS in Japan.
      • English abstracts
      • Patent Abstracts of Japan
      • Other producers (Derwent, CAS)
      • PATOLIS-e
    • Patent Abstracts of Japan
      In 1976, JAPIO and JPO started to issue “Patent Abstracts of Japan”, or “PAJ” for short, in English.
      Patent Abstracts of Japan are also available as an online database on a number of commercial hosts like Dialog, Questel Orbit or STN. This database, called “JAPIO” after its producers, contains not only English abstracts of originally Japanese patent applications but also the bibliographic data of foreign-based patent applications.
    • Patent Online Information System (PATOLIS) is a comprehensive database specializing exclusively in Japanese industrial property documents.
      This online database contains information on all the different forms of industrial property rights, namely on patents, utility models, trademarks and industrial designs. Thus, PATOLIS is not only the most comprehensive, but also the most up-to-date source for Japanese patent information.
      PATOLIS-Web, can be accessed at:
      http://www.japio.or.jp/english/
      http://www.patolis.co.jp/en/index.html
      http://www.p4.patolis.co.jp/service/web/HWWK700?service=WB
       
    • Even though the data contained in PATOLIS are entirely in the Japanese language, the database is open to all users. User-ids and passwords can be obtained either direct from JAPIO or via the European Patent Office (EPIDOS) in Vienna.
    • PATOLIS-e Gateway Service
      To access the PATOLIS-e Gateway Service via Questel on October 1st, 2006, you either have to be an existing Questel customer.
      The PATOLIS-e gateway will only allow searches via patent number, application number or any other document number. As with the existing service this includes both patents and utility models, however machine translation features will not be available.
    • Japan does not have an equivalent to either the …..
      • U.S. The Patent and Trademark Depository Libraries (PTDLs) (disseminating patent and trademark information in every state plus the District of Columbia and Puerto Rico.)
      • Or the European Patent information centres (PATLIB)(network of patent information centresthroughout Europe: improve communication and co-operation between individual centres and promote patent information awareness and the provision of services to the public.)
    • The expanding importance of public sector institutions (e.g. universities and government research laboratories) as generators of innovation: Moving research and development towards commercialization.
    • What is the role of patent information in this process?
      But first a quick overview……
    • The Bayh-Dole Acts in U.S.A. and Japan
    • Bayh-Dole U.S.A.
    • Bayh-Dole Act [patent] The 1980 Bayh-Dole Act (P.L. 96-517, 94 Stat. 3015) amended the patent code to encourage commercialization and public availability of inventions resulting from federally supported research. The law allows universities, small businesses, and non-profit organizations to patent the results of their research and license them to the private sector subject and to government MARCH-IN RIGHTS. Prior to Bayh-Dole, rights to those inventions were either assigned to the federal funding agency or dedicated to the public through publication of research results. The Act has resulted in an increased number of patents issued to universities. The statute is codified at 35 U.S.C. §§200-211.
    • Major provisions of the Bayh-DoleAct include:
      • Non-profits, including universities, and small businesses may elect to retain title to innovations developed under federally-funded research programs
      • Universities are encouraged to collaborate with commercial concerns to promote the utilization of inventions arising from federal funding
      • Universities are expected to file patents on inventions they elect to own
      • Universities are expected to give licensing preference to small businesses
      • The government retains a non-exclusive license to practice the patent throughout the world
      • The government retains march-in rights.
    • The Bayh-Dole Act: It’s Good Policy:
      • Allows universities and small companies to own inventions they make with federal funding.
      • Funding agencies can use these discoveries royalty-free for their own purposes.
      • Universities are allowed to partner with industry to translate research results into products benefiting the public.
      • Resulting university licensing income is invested in more research, rewarding university scientists and supporting technology transfer offices.
      • Operation under the Act keeps the inventors actively engaged in the technology transfer process which is critical for companies to enable products for public use.
    • It’s Good for the U. S. Economy:
      • University research helped create whole new industries, such as biotechnology, where the U.S. enjoys a leadership role.
      • Since enactment, more than 5,000 new companies have formed around university research results – the majority located in close proximity to the university.
      • University patenting has exploded from just 495 issued patents in 1980 to 3,278 in 2005.
      • In 2005 alone, universities helped introduce 527 new products to the marketplace. Between 1998 and 2005, 3,641 new products were created.
      • University technology transfer creates billions of dollars of direct benefits to the U.S. economy every year.
    • It’s Good for the Public:
      Significant benefits for public health and well being are derived from technologies developed under the Bayh-Dole Act, such as:
      • Synthetic penicillin
      • Hepatitis B vaccine
      • Citracal calcium supplement
      • Cisplatin and carboplatin (cancer therapeutics)
      • Human growth hormones
      • Treatments for Crohn’s disease
      • Avian Flu vaccine
      • Clean water technologies
    • The Bayh-Dole Act is typically administered by public sector institutions technology transfer offices (TTOs), e.g., the MIT TTO
    • TTO’s business includes:
      • The discovery, evaluation and selection of research results which can be commercialized by private institutions;
      • Procurement, maintenance and enforcement of intellectual property rights in such research results;
      • Providing information about such research results;
      • Technology transfer of such intellectual property rights to industry;
      • Distribution of revenues resulting from such technology transfer.
    • TTOs, play an important role as liaisons between academic institutions and corporations. In 2003, TTOs successfully technology-licensed to corporations 1,700 patents owned by academic institutions. The newest data shows that TTOs have generated at least 5.5 million US dollars in royalty income.
    • “Bayh-Dole” Act of Japan
    • Japan followed the US example and enacted the Technology Transfer Promotion Act in August 1998. This Act encouraged universities to establish a technology licensing office/organization (TLO) in order to promote the industry and research activity.
       
      In the following year, 1999, the Japanese government enacted the Industrial Revitalization Act. Article 30 of the Industrial Revitalization Act was called the Japanese Bayh-Dole Act. Enactment of these Acts promoted industry-academics-government collaboration.
    • The purposes of the Japanese Bayh-Dole Act are:
      • To promote research activities at private companies and universities
      • To promote the industrial activity by utilizing the result of the government-funded researches.
    • Ergo … the main function of the Japanese Bayh-Dole Act is very similar to that of the US Bayh-Dole Act. It aims to give ownership to universities and research institutions and promote transfer of their technology to industry for commercialization.
    • TTOs in Japan
       
      Japan began to acknowledge the role of TTOs in the late 1990s, and by the early 2000s had established a number of TTOs.The1998 Law Promoting Technology Transfer from Universities to Industry, also referred to as the TTO Law, resulted from a new collaboration of sorts between the Ministry of International Trade and Industry (METI). The TTO Law aimed to encourage universities to get into the technology licensing business.
    • TTOs in Japan:
      In 1999, following on from the TTO reforms, the Law on Special Measures for Industrial Revitalization also called the Industrial Revitalization Law (IRL) was enacted. The Industrial Revitalization Law was modeled on the 1980 Bayh-Dole Act in the United State, which granted universities patent rights to university faculty developed IP, and likewise, the IRL provided similar rights to Japanese universities.
    • The number of patent applications filed by Japanese universities has significantly increased since the enactment of Japanese Bayh-Dole Act, particularly, the number of applications filed by technology licensing organizations has increased from 16 in 1998 to 699 in 2001.
    • TTOs in both the U.S.A. and Japan have limited use of patent information, primarily directed towards their licensing activities.
      Developing patent research capabilities at TTOs represents a unique opportunity to advance innovation for the public good, consistent with their missions and with the policy behind the Bayh-Dole Act.
    • References used in this presentation
      Claudine Arnold Jenda, Resource Sharing & Information Networks Vol. 18 No. 1/2, 2005/2006, pp. 183-201.
      AUTM The Association of University Technology Managers
      PTO Adds New Research Site for Inventors, Agency Group 04, Department of Commerce.
      McCarthy’s Desk Encyclopedia of Intellectual Property, Third Edition; J. Thomas McCarthy, Roger E. Schechter, and David J. Franklyn (2004) p. 46.
      Georg Artelsmair, World Patent Information, Sep 2009, Vol. 31 Issue 3, p 184-189, 6p
      http://www.uspto.gov/go/ptdl/