Japanese Patent FAQs
Q.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 the patentee, other than the exclusive licensee, can practice the patented invention within the limits of the exclusive license. An exclusive license is not legally effective unless it is registered at the JPO. More specifically, 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 not possible to record a non-exclusive license.
Q.Is it possible to record a Licensee before a patent is granted for a patent application?
An exclusive license may be recorded based on a license agreement before the application becomes a patent. If an exclusive license has been recorded with the JPO, even if the applicant goes bankrupt, the bankruptcy trustee will not be permitted to cancel the recorded provisional 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.
However, it is not possible to record a non-exclusive license as of April 1, 2012
Q.We recorded a license agreement for a patent application with the JPO (provisional exclusive license agreement). If we file a divisional application, will the license agreement also be recorded with the divisional application?
Yes. The JPO will automatically add the divisional application to the recordation of the license agreement of the parent case, using its official authority. In that case, the licensee will need to pay the official fee as a tax (registration and license tax). The JPO will issue a request for payment of the tax. The tax must be paid at a designated bank or post office within one month from the date the JPO adds the divisional application.
Q.If we file a divisional application of a patent application in which a provisional license agreement has been recorded, is it possible to avoid adding the divisional application to the recordation of the license agreement of the parent case?
Yes, in that case, please let us know so that we can insert such a notice to that effect in the application of recordation of the license agreement of the parent case or in the divisional application. Otherwise, the JPO will automatically add the divisional application to the recordation of the license agreement of the parent case.
Q.Can anyone access the information of a deed of license agreement once such a deed has been filed with the Japanese Patent Office?
Yes. If you indicate the consideration in the deed, anyone will be able to gain access to the information by obtaining the JPO registration record for the patent. It is not necessary to indicate the consideration in the deed that is submitted to the JPO. You can file an abstract of the license agreement.
If you would like to record a license, we will provide you with the appropriate forms. In that case, please let us know the type of license, the period of the license and the terms thereof (e.g., all claims or only a subset thereof, production, sales, etc.) since the terms must comply with Japanese patent law.