Database on Flexibilities in the Intellectual Property System

Provisions of Law

Article 72 (Related to patented inventions, etc., by others)

Where a patented invention uses another person's patented invention, registered utility model, registered design or design similar thereto for which an application was filed prior to the date of filing of the said patent application, or where the patent right is in conflict with another person's design right or trademark right obtained based on an application filed prior to the date of filing of the said patent application, the patentee, exclusive licensee or non-exclusive licensees may not work the patented invention as a business.

Article 79 (Non-exclusive license based on prior use)

A person who, without knowledge of the content of an invention claimed in a patent application, made an invention identical to the said invention, or a person who, without knowledge of the content of an invention claimed in a patent application, learned the invention from a person who made an invention identical to the said invention and has been working the invention or preparing for the working of the invention in Japan at the time of the filing of the patent application, shall have a non-exclusive license on the patent right, only to the extent of the invention and the purpose of such business worked or prepared.

Article 80 (Non-exclusive license due to the working of the invention prior to the registration of the request for a trial for patent invalidation)

(1) A person falling under any of the following items, who is doing a business working an invention in Japan or preparing such business, before the registration of a request for a trial for patent invalidation, without knowledge that the patent falls under any of the paragraphs of Article 123(1), shall have a non-exclusive license regarding the invalidated patent right or the exclusive license existing at the time of the invalidation, only to the extent of the invention and the purpose of such business worked or prepared:

(i) the original patentee in the case where one of two or more patents granted for the same invention has been invalidated;

(ii) the original patentee in the case where, after a patent has been invalidated, a patent is granted to the person who is entitled to obtain a patent for the same invention; and

iii) in the case referred to in items ( ) (i) and (ii), a person that, at the time of the registration of the request for a trial for patent invalidation, has an exclusive license regarding the patent right to be invalidated, or a non-exclusive license effective under Article 99(1) regarding the patent right or an exclusive license on the patent right.

(2) The patentee or the exclusive licensee shall have a right to receive reasonable

consideration from the non-exclusive licensee under the preceding paragraph.

Article 81 (Non-exclusive license after expiration of duration of design right)

Where a design right with regard to an application for a design registration filed on or before the date of filing of a patent application is in conflict with the patent right with regard to the patent application, the original holder of design right shall, upon expiration of the duration of the design right, have a non-exclusive license on the said patent right or on the exclusive license actually existing at the time of expiration of the duration of the design right, limited to the extent of the original design right.

Article 82

(1) Where a design right with regard to an application for a design registration filed on or before the date of filing of a patent application is in conflict with the patent right with regard to the patent application, a person who, at the time of expiration of the duration of the design right, actually owns the exclusive license on the design right, or a non-exclusive license having effect under Article 99(1) of the Patent Act as applied under Article 28(3) of the Design Act on the design right or on the exclusive license shall, upon expiration of the duration of the design right, have a non-exclusive license on the patent right or on the exclusive license actually existing at the time of expiration of the duration of the design right, limited to the extent of the original right.

(2) The patentee or the exclusive licensee shall have a right to receive reasonable consideration from the non-exclusive licensee under the preceding paragraph.

Article 83 (Award granting non-exclusive license where invention is not worked)

(1) Where a patented invention is not sufficiently and continuously worked for 3 years or longer in Japan, a person intending to work the patented invention may request the patentee or the exclusive licensee to hold consultations to discuss granting a non-exclusive license; provided, however, that this shall not apply unless 4 years have lapsed from the filing date of the patent application in which the patented invention was filed.

(2) Where no agreement is reached by consultations or no consultations are able to be held as provided in the preceding paragraph, the person intending to work the patented invention may request the Commissioner of the Patent Office for an award.

Article 92 (Award granting non-exclusive license to work own patented invention)

(1) Where a patented invention falls under any of the cases as provided in Article 72, the patentee or exclusive licensee may request the other person under the said Article to hold consultations to discuss granting a non-exclusive license to work the patented invention or a non-exclusive license on the utility model right or the design right.

(2) The other person under Article 72 who is requested to hold consultations under the preceding paragraph may request the patentee or exclusive licensee requesting such consultations to hold consultations to discuss granting a non-exclusive license to the extent of the patented invention that the said patentee or exclusive licensee intend to work with a non-exclusive license on the patent right, on the utility model right or on the design right granted through consultations.

(3) Where no agreement is reached by consultations or no consultations are able to be held as provided in paragraph (1), the patentee or the exclusive licensee may request the Commissioner of the Patent Office for an award.

(4) Where no agreement is reached by consultations or no consultations are able to be held as provided in paragraph (2) and where a request for an award is filed under the preceding paragraph, the other person under Article 72 may request the Commissioner of the Patent Office for an award only within the time limit for the submission of a written answer by the said other person designated by the Commissioner of the Patent Office under Article 84 as applied mutatis mutandis under paragraph (7).

(5) In the case of paragraph (3) or (4), the Commissioner of the Patent Office shall not render an award to the effect that a non-exclusive license is to be granted where the granting of the non-exclusive license will be unreasonably prejudicial to interest of the other person under Article 72, the patentee or the exclusive licensee.

(6) In the case of paragraph (4), in addition to the case provided for in the preceding paragraph, the Commissioner of the Patent Office shall not render an award ordering a non-exclusive license to be granted if an award ordering a non-exclusive license to be granted is not rendered with respect to the request for an award under paragraph (3).

(7) Articles 84, 85(1) and 86 through 91-2 shall apply mutatis mutandis to the award under paragraph (3) or (4).

Article 93 (Award granting non-exclusive license for public interest)

(1) Where the working of a patented invention is particularly necessary for the public interest, a person(s) intending to work the patented invention may request the patentee or the exclusive licensee to hold consultations to discuss granting a non-exclusive license.

3 Articles 84, 85 ( ) (1) and 86 through 91-2 shall apply mutatis mutandis to the

award under the preceding paragraph.

Article 94 (Transfer, etc. of non-exclusive license)

(1) Except for a non-exclusive license granted by an award under Article 83(2), 92 (3), 92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, a non-exclusive license may be transferred only where the business involving the working of the relevant invention is also transferred, where the consent of the patentee (or, in the case of non-exclusive license on the exclusive license, the patentee and the exclusive licensee) is obtained and where the transfer occurs as a result of general succession including inheritance.

(2) Except for a non-exclusive license granted by an award under Article 83(2), 92 (3), 92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, a non-exclusive licensee may establish a right of pledge on the non-exclusive right only where the consent of the patentee (or, in the case of non-exclusive license on the exclusive license, the patentee and the exclusive licensee) is obtained.

(3) A non-exclusive license granted by an award under Article 83(2) or 93(2) may be transferred only where the business involving the working of the relevant invention is also transferred.

(4) Where a non-exclusive license is granted by an award under Article 92(3) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, the said non-exclusive license shall be transferred together with the patent right, utility model right or design right of the non-exclusive licensee on which the non-exclusive license is granted and the business involving the working of the relevant invention in the case where each right is transferred together with the said business, and shall be extinguished in the case where each right of the said non-exclusive licensee is extinguished or transferred independently of the said business.

(5) A non-exclusive license granted by an award under Article 92(4) shall be transferred together with the patent right, utility model right or design right of the non-exclusive licensee on which the non-exclusive license is granted, and shall be extinguished in the case where the said patent right, utility model right or design right is extinguished.

(6) Article 73(1) shall apply mutatis mutandis to non-exclusive licenses.

Article 95 (Right of pledge)

Unless otherwise agreed upon by contract, where a right of pledge is established on a patent right, exclusive license or non-exclusive license, the pledgee may not work the patented invention.

Article 96

A right of pledge on a patent right, exclusive license or non-exclusive license may be exercised against any consideration to be paid for the patent right, exclusive license or non-exclusive license or any money or goods to be received by the patentee or the exclusive licensee for the working of the patented invention; provided, however, that the pledgee have to attach the consideration, money or goods prior to the payment of money or delivery of goods.

Article 97 (Waiver of patent right, etc.)

(1) Where there is an exclusive licensee, pledgee or non-exclusive licensee as provided in Article 35(1), 77(4) or 78(1), a patentee may waive the patent right, only where the consent of the said exclusive licensee, pledgee or non-exclusive licensee is obtained.

(2) Where there is a pledgee or non-exclusive licensee as provided in Article 77(4), an exclusive licensee may waive the exclusive license, only where the consent of the said pledgee or non-exclusive licensee is obtained.

(3) Where there is a pledgee, a non-exclusive licensee may waive the non-exclusive license, only where the consent of the said pledgee is obtained.

Title:	Articles 72, 79-83 and 92-97 of the Patent Law No. 121 of 13/04/1959, as last amended by Act No. 109 of 2006
Field of IP:	Patents
Type of flexibility:	Compulsory licenses and government use
Summary table:

Legislative Implementation of Flexibilities - Japan

Provisions of Law