5 - The management of intellectual property protection

5.1 - Permitting the use and exploitation of latent patents


Sometimes technologies developed by university researchers do not reach the markets, either because they fail to identify potential customers, or because the moment is not right for their commercialisation. Similarly, R&D&i projects developed by companies often yield unexpected and innovative results which are not necessarily of interest to them because they do not offer any practical application to their specific business activity. Nevertheless, such results can often be extremely valuable for the research activities or commercial interests of a third party, and the selling or leasing of this unused technology can be a useful mechanism to maximise the exploitation of knowledge generated by universities and companies.


MIT Technology Licensing Office (EEUU)

This organisation, which is part of the Massachusetts Institute of Technology (MIT), aims to increase business investment in R&D tasks developed within Universities through the licensing of intellectual property rights generated by the work of its researchers. The TLO provides professional advisory services to university researchers on the legal protection of their work, whilst making substantial efforts to maximise the commercial potential of the institution’s portfolio of patents. As an example of its commercial activities, the TLO keeps an updated database with its entire exploitable patent portfolio, which is indexed in different criteria and accessible via the Web to any company in the world.


At the end of the 90s, the Japanese government confirmed that despite being one of the countries with the highest number of issued patents, the country’s commercialisation ratio was extremely low. To tackle the situation, an ambitious strategy was designed, coupled with a series of legislative and operational measures, which were aimed at minimising the number of un-commercialised patents. The solution to the problem was framed in two different ways: firstly, measures were proposed for patents developed by university researchers to be publicised and exploited by companies; and secondly, institutions were created which facilitated the commercialisation of patent licences between private companies. Japanese universities chose four different approaches: some created their own commercial offices to "sell" patents to companies (e.g. Waseda University) or set up ex-novo segregated companies specifically for this purpose (e.g. the University of Tokyo), whilst others established joint ventures with private companies (e.g. Osaka University) or fully outsourced these services to specialised companies (e.g. the Tokyo Institute of Technology). Additionally, the Japanese Patent Office launched specialised services aimed at boosting the commercialisation of patents between companies.


Most leading mobile phone manufacturers have a number of patents which have not been successfully transformed into marketable products, either due to the time restrictions in manufacturing processes or because of lack of interest from developers. To maximise the potential of this situation, Nokia decided to transfer some of its patents to a range of other Finnish organisations, so that they can use them as a basis to design new products.

Implementation process

Agents required for implementation

This recommendation can be implemented by several companies in cooperation with each other and / or with universities. It requires cooperation between the Technology Transfer Offices of universities and the various companies which are involved.

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  1. Technology Licensing and University Research in Japan, Takenaka, T. (2005) - International Journal of Intellectual Property - http://www.ipaj.org/english_journal/pdf/Technology_Licensing_and_University_Research.pdf
  2. http://web.mit.edu/tlo/www/ Technology Licensing Office - MIT - http://www.jpo.go.jp/index.htm - Japan Patent Office.
  3. www.nokia.com