Under the Japanese Patent Act, registration is required for an exclusive licensee to be able to assert its exclusivity directly against any third party , as opposed to requesting the licensor to do so. Specifically, a licensee who enters into an exclusive licence agreement with a patentee without registering such exclusive licence with the Japan Patent Office has no right to directly demand an infringer of the licensed patent to cease its infringement even within the field in which the licensee shall have the exclusivity under the licence agreement. Rather, a licensee needs to register certain information in the patent registry maintained in the Patent Office in order to obtain such right and become a true exclusive licensee. Under the current registration system, the exclusive licensee’s name and the scope of the licence shall be registered and such information shall be made available to the public; however, this registration system has been unpopular because licensees are generally reluctant to disclose information which may be considered business secrets.
Recently, the licence system has been under discussion and an authoritative study group founded by the director-general of the Japanese Patent Office has recommended amending the current system. Under the proposed amendments, registration would become optional to assert certain rights and mandatory to assert other rights. For example, a licensee who enters into an exclusive licence agreement with a patentee would have the right to directly demand, without any registration, the cessation of infringement against the infringer. Registration would, however, still be required in order for an exclusive licensee to assert such right against any third party to whom the patentee subsequently grants a licence in breach of the licence agreement with the exclusive licensee; In such cases it is expected that the information to be registered and disclosed would be more limited than the current registration system in light of the protection of licensees’ business secrets.
It is expected that the Japanese Patent Act will be amended in the near future and the rights of the exclusive licensees will be strengthened. In addition, various other patent topics are also under discussion, which maybe adopted in connection with the amendment of the Japanese Patent Act.
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| Masatoshi Yokogi |
Anderson Mori & Tomotsune
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takashi.nakazaki@amt-law.com
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