Japanese Frontrunners of Intellectual Property Rights - vol.4
Technology Transfer at Japanese Universities and the Rise of the TLO
-An Interview with Mr. Takafumi Yamamoto
Interviewed on June 30, 2016
(Published on May 19, 2017)
A pioneer in the field of technology transfer between university and industry in Japan, Takafumi Yamamoto has played a key role in developing technology licensing at the University of Tokyo, serving as President and CEO of TODAI TLO since 2000. He discusses the ways in which university-industry collaboration has changed in Japan over the past twenty years and highlights key differences in the commercialization of university inventions between the US and Japan.
Q: Compared to the US, the establishment of Japanese university technology licensing offices (TLOs) is a more recent development. How long have you been involved in the technology transfer business, and how did you develop your expertise in this field?
Mr. Takafumi Yamamoto: Even though TODAI TLO is a private company, we are a subsidiary of the University of Tokyo (UTokyo). We believe new inventions can move the world forward towards a better direction. I established our business model after gaining insight into technology licensing at universities through a consultation contract with Niels Reimers. I call Reimers the “Father of Technology Licensing” because he was a pioneer in the field and established the Office of Technology Licensing (OTL) at Stanford University in 1969. He later established additional technology licensing offices at MIT, UC Berkeley, and UC San Francisco before eventually becoming a cofounder of the Association of University Technology Managers (AUTM). This is why the business model of TODAI TLO is similar to that of Stanford or MIT.
I am the first person to enter the business of tech transfer from university to industry in Japan – I first entered this field in 1996, twenty years ago. Of course, the duration of my experience would be considered short compared to that of my counterparts in American technology licensing offices, but it is actually the longest in Japan. This is one of the main reasons why TODAI TLO has managed to accumulate considerable institutional knowledge in the technology transfer process, as I have had the opportunity to cultivate know-how and have made many personal connections over the past two decades.
Q: What are some innovative technologies that TODAI TLO has recently assisted in patenting and licensing?
Mr. Takafumi Yamamoto: One of the success stories of technology developed at the University of Tokyo is Vision Chip, which was invented by Prof. Masatoshi Ishikawa. This chip is a type of computer technology that functions as artificial or robotic eyes. It is very similar to Kinect, a motion-sensing input device for gaming developed by Microsoft that does not require a controller; however, Vision Chip is different from Kinect in that it does not suffer from a time delay while sensing movement, which was a drawback of previous technologies.
Q: That’s very interesting – it seems that such an invention could serve a variety of important functions beyond gaming.
Mr. Takafumi Yamamoto: Yes, the technology is very appropriate for a wide variety of applications, and Vision Chip has already garnered considerable interest from industry. It can be applied to automatic driving or security systems, or to other fields such as robotics and biomedicine. If you use this technology for cell phones, for example, it can make typing much easier and would eliminate the need to use a keyboard or controller to type. Even TVs could be operated by motion or gestures rather than a remote. In addition, the performance of Vision Chip is better than human eyes and can conduct high-speed pattern analysis. This is important for applications such as high-speed conversion of print to electric text, and is incredibly useful for digitizing books.
Q: Biomedicine is another field that I imagine generates considerable licensing activity. Have there been any notable examples of collaboration with the medical and pharmaceutical industry?
Mr. Takafumi Yamamoto: One significant example is Vedanta, a company founded in Boston based on intestinal flora technology developed at the University of Tokyo. Nowadays, many Japanese companies are very keen on licensing these kinds of technologies, but about six or seven years ago such interest was lacking. So Vedanta is a unique case of technology developed at a Japanese university that was used to establish a spin-off company overseas. Because there was no interest from Japanese companies at the time, we decided to discuss with US venture capital firms and subsequently established a spin-off company in Boston. Recently, Vedanta Biosciences signed a $241 million licensing deal with Janssen and J&J Innovations – a very successful outcome.
A similar case is Peptidream, which was founded in 2006 based on the inventions of Prof. Hiroaki Suga. The company holds a library of over 1 trillion peptides, along with search technology for finding the right peptides to target diseases with. They began their business by approaching multiple Japanese pharmaceutical companies, but found it difficult until they started forming alliances with big-pharma firms overseas. As of now, Peptidream has already collaborated with many large pharmaceutical companies, including Novartis, Daiichi-Sankyo, Merck, Teijin, etc. This company is one of the most successful spinoff companies in Japan and was recently honored with an award by the Prime Minister in recognition of its success.
Technology transfer at the University of Tokyo is not limited solely to the work of professors or senior faculty; there is growing interest in patenting and licensing among many student researchers as well.
Q: In addition to professors and faculty, are student researchers at the University of Tokyo engaged in commercializing their inventions?
Mr. Takafumi Yamamoto: Yes, commercialization of technology developed by students is also active at the University of Tokyo. One of the most well-known cases is “popIn,” which was a spin-off company started by Mr. Tou Tei, an exchange student from China. The popIn service was based on an invention he had created in his student days that increases user retention time on the Internet – many mass-media companies and other firms currently use this technology. Mr. Tei had envisioned a buyout from the beginning, and he was able to successfully negotiate a very lucrative deal with the Chinese company Baidu in June 2015.
Q: How would you describe the current state of university-industry collaboration in Japan, and in what ways has it evolved?
Mr. Takafumi Yamamoto: 2005 was a very important year for Japanese universities because the Japanese government had changed the university system earlier in 2004. Prior to that year, Japanese national universities had no legal status and could not be patent owners. Consequently, patents belonged to individual inventors. At that time, we bought inventions from inventors, then we filed the patent application and licensed the technology to companies. But after the government changed the national university system in 2004, all patent applications belonged to the university.
Currently, university-industrial collaborations are demonstrating an upward trend in Japan. From 2011 to 2013, for example, both the number of active licenses and the total royalty income exhibited significant increases, and are continuing to grow every year.
Although the Japanese situation is the same as that of the US 19 years ago, I believe that Japan is well on the path to catching up – in fact, the growth rate for royalty income is higher in Japan than in the US. Although only a very small minority of Japanese universities, such as the University of Tokyo, are currently succeeding in producing sufficient value from licensing revenue, the situation may not be so negative as it first appears. In general, this business takes a very long time to show profitability, and the growth of university-industry collaborations usually follows a hockey stick-shaped curve – for example, Stanford University took 18 years before turning a profit and similarly, MIT took around 10 years. It seems that universities in Japan are now entering the early upward growth phase of the curve.
The limited licensing of Japanese university technology to SMEs and startups continues to represent a significant problem in the field of intellectual property in Japan.
Q: Are there any other significant differences between university-industry collaboration between Japan and the US?
Mr. Takafumi Yamamoto: In Japan, there are only a few university technologies that are licensed to startups, whereas two-thirds of the technologies developed in US universities are licensed to small and medium-sized companies (SMEs) and startups – this constitutes a major difference between the US and Japan in the university-industry technology transfer process, and is one of the significant problems in IP for Japan.
But at the University of Tokyo, the proportion of the types of licensing we do is actually quite similar to that of the US, and many of our students here are eager to establish their own spinoff companies. In fact, I recently met with some students at the university of Tokyo who have already established their own startups and we discussed the topic of patenting and how to protect their technologies.
Of course, things were very different in the past. When I first started this business in Japan, most of our faculty members were not interested in patenting or establishing spinoff companies, but nowadays so many are actively involved in such activities. So it can be clearly observed that the situation has changed tremendously in Japan within a span of only 20 years.
Q: What are the organizational structures and procedures that play a role in managing technology transfer at the University of Tokyo?
Mr. Takafumi Yamamoto: At the University of Tokyo, we have three organizations to encourage industry-university collaborations. The first is the Division of University Corporate Relations, which is a department within the university that covers sponsored research or joint research between Todai and companies. My company, TODAI TLO, is the operating entity for intellectual property and manages all patent filing or licensing. The third component of this “support triangle” is the University of Tokyo Edge Capital (UTEC), which is a kind of university venture capital company that supports the start-up of university-oriented venture businesses by providing funds and other resources.
The process of technology transfer, from invention to licensing, follows a very specific procedure at the University of Tokyo. When a researcher makes an invention and wants to file a patent application, he or she must first send an invention disclosure form to the Department of University Corporate Relations. All of the invention disclosures come to TODAI TLO once it leaves the DUCR. After we accept the disclosure form, we always set up an interview with the researcher and visit each laboratory in order to assess the patentability or marketability of the invention. Following further evaluation, we formally make a recommendation to the university regarding whether or not it should apply for a patent. If a decision to patent is made, then we ask an outside patent attorney to make the appropriate documentation, file the application, and begin marketing or licensing to industry. So from the viewpoint of industry, TODAI TLO is a one-stop shop or “gatekeeper” for licensing – if any company wants to license with the University of Tokyo, they must first contact and negotiate with us.