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Japanese Patent Application FAQs
License
1. Is it possible, or indeed necessary, to officially record details of a Licensee (i.e, not an Assignee) in Japan?
First of all, in Japan, there are two kinds of license agreements for a patent: an exclusive license and a non-exclusive license. An exclusive license is a right by which a person other than a patentee may commercially practice the patented invention exclusively to a certain extent. No one, even in a case where he/she is the patentee, except the exclusive licensee can practice the patented invention within the extent that the exclusive license was set. An exclusive license is not legally effective unless it is registered at the JPO. More concretely, the licensee is not entitled to pursue legal action against a third party infringing the patent unless the license is registered.
On the other hand, a non-exclusive license is a right by which a person other than the patentee can commercially practice the patented invention to a certain extent. It is possible to register a non-exclusive license at the JPO although registration is not required. However, by registering the license at the JPO, the non-exclusive licensee can act effectively against a third party with respect to potential infringements.
2.Is it possible to record a Licensee before a patent is granted for a patent application?
Yes. A provisional exclusive license and/or a provisional non-exclusive license may be recorded based on a license agreement before the application is granted a patent.
Once a provisional non-excusive license has been recorded, it shall be effective against any person subsequently acquiring the right to obtain a patent with respect to the provisional non-exclusive or provisional exclusive license.
Further, Even if the applicant goes bankrupt, the bankruptcy trustee is not be permitted to cancel the recorded provisional exclusive or non-exclusive license based on Chapter 56 of the Bankruptcy Act.
A provisional exclusive license must be recorded at the JPO in order to be in effect. A provisional non-exclusive license must be recorded in the JPO in order to be entitled to status as a license against a third party.