Procedures After Grant of Patent
Maintenance of Patent Right
The term of validity for a patent right is 20 years from the application date (the longest term is 25 years for rights regarding which a term of validity extension has been registered). However, in order to maintain a right, annuity payments are required. Even if the period for annuity payments has lapsed, the right can be maintained if the annuity and a surcharge of the same amount are paid within a 6-month period.
Registration Fee / Annuity Payment Deferment System
Individuals receiving public assistance, corporations lacking funds, and other cases (such as universities) recognized under special law, can be eligible, under fixed conditions, for a Registration fee exemption/reduction or deferment of payment.
Registration Fee Automatic Payment System
Through direct debit or bank ledger prepayment, this system allows the automatic withdrawal of annuities after the fourth year in one-year units. The right owner must submit an application in order to use this system.
License of Right
1) Exclusive License (Article 77 of the Japan Patent Act)
Exclusive License is a right that enables the license owner to exclusively implement a patented invention within the scope of the established framework.
In addition to license revenue, the advantage of Exclusive License is the ability of the right owner to claim an infringement of the right against a third party that has implemented the patented invention without consent.
Exclusive License under Japanese patent law must be registered with the JPO to take effect. If you have any enquiries or requests regarding Exclusive License registration, please contact us.
2) Non-exclusive License (Article 78 of the Japan Patent Act)
Non-exclusive License is the right to implement a patented invention.
Because it is non-exclusive, the advantage of this license is that it can be granted to multiple parties. However, unlike Exclusive License holders, Non-exclusive License holders cannot demand an injunction or claim damages against a third party.
Transfer of Right
1) Transfer by Assignment
If the patentee has no plan or possibility to implement a patented invention, it is possible to sell and assign the right to a third party. The advantage of transfer by assignment is that in general, the right can be sold to another company at a higher price than a license, and can help avoid unnecessary patent administration, management and annuity costs.
Assignment takes effect through registration with the JPO. Please contact us if you have any enquiries regarding the required documentation.
2) Transfer by Merger / Succession
Transfer procedures become necessary when rights change due to corporate mergers, organizational restructuring, succession, and other events. Since third parties can look up the right owner in the patent register, it is necessary to make sure that the right owner registered in the patent register corresponds with the actual right owner.
Please contact us if you have any enquiries regarding the necessary documentation.