License Recordation in Japan
In Japan, there are two types of license agreements for a patent: an exclusive license and a non-exclusive license. An exclusive license in Japan is a right by which a person other than the patentee may commercially practice the patented invention exclusively to a certain extent. No one, other than the exclusive licensee, including the patentee, may practice the patented invention within the scope of the exclusive license. This is an important difference between the definitions of an exclusive license in the U.S. and Japan.
A non-exclusive license is a right by which a person other than the patentee may commercially practice the patented invention to a certain extent. It is not possible to record a non-exclusive license in the JPO.
An exclusive license must be recorded at the JPO in order to be legally effective. In particular, under the Japanese patent laws, unless the license is recorded with the JPO, the license is not considered to exist and the licensee is not entitled to pursue legal action against a third party infringing the patent.
An exclusive license may be recorded before the application is granted (called a “provisional license”). Once a provisional license has been recorded, it is effective against any party subsequently acquiring the patent application. If the patent right is transferred to a third party, such as by bankruptcy, inheritance, or assignment, the licensee’s right preserved. A provisional exclusive license must also be recorded at the JPO in order to be in effect. An applicant and/or an exclusive licensee can pursue infringement after the patent application matures into a patent.
Of course, it is also possible to record an exclusive license after the patent application is granted. Although there is no set time frame for recordation to entitle the licensee to an award of damages, the amount of compensation will be calculated as of the recordation date of the license agreement.
To record an exclusive license with the JPO, it is necessary to file a Deed of Contract for Establishment of an Exclusive License and a Power of Attorney for the licensee. The JPO accepts an abstract of the exclusive license agreement for the recordation, i.e., it is possible not to specify the consideration in the deed.
If you would like to record an exclusive license agreement with the JPO, please let us know so that we can provide you with the appropriate forms to execute and file with the JPO.
Please also refer to our website with respect to license:
License | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City