Patent Law Practice Center

The Evolution of Patent Licensing Laws in Japan

In this volatile global environment, more and more companies are licensing patents and patent applications outside of the US.  To get up to speed on recent amendments to Japan’s Patent Law, our friends at DLA Piper sent along this article outlining the changes that may effect the licensee.

Companies that have licensed or plan to license Japanese patents should be mindful of Japan’s 2009 Amendment to its Patent Law, proffering greater rights to licensees of patents and patent applications.

Before the Amendment

Prior to the Amendment, patent owners were required to register exclusive licenses (senyou-jisshiken) with the Japan Patent Office for the licenses to be effective. For non-exclusive licenses (tsujou-jisshiken), registration was optional. However, if a non-exclusive license was not registered, a licensee could face the loss of considerable rights, such as its ability to assert its license rights against a third party if the licensor sold the patent to another entity. However, registration required extensive disclosures, raising concerns among potential applicants that they might reveal business secrets. These disclosures were the primary reason nonexclusive licenses often were not registered. (more…)