1. Introduction

Article 72 of the Japanese Patent Law stipulates that a patentee cannot work the patented invention (later patented invention) as a business when the patent right uses another patented invention (earlier patented invention) for which the patent application was filed before the filing of the later patent application.  In other words, a patentee who has a later patent right that uses a patented invention of an earlier application cannot work the later patent right unless the patentee of the later patent right has a license to work the earlier patent right.

On the other hand, Japanese Patent Law has no stipulation regarding the possibility of working a later patented invention which uses another earlier patented invention filed by another patent holder.

  1. A Judicial Precedent

There was one case in the past where an argument was made that a patent holder of an earlier filed patented invention can work a later patented invention, since the later patented invention which uses the earlier patented invention is within the scope of the right of the earlier patented invention.

In response to this argument, the Tokyo District Court ruled as follows (Case No. H10-(Wa)-13754).

“It is stipulated in Article 68 of the Japanese Patent Law that a patentee has the right to work a patented invention as a business.  However, it is only logical that even if a patented invention is worked by the patentee, there are restrictions to the working of the right in relationship with the rights of others.  In addition, the working of a certain patented invention under circumstances that places it within the technical scope of the right of a separate patented invention of another person, is considered as patent infringement and is not permitted.  This logic does not vary depending on whether the patented invention of another is an earlier patented invention or a later one, … and does not mean that the patentee of the earlier patented invention can uninhibitedly work the part of an invention that was added by the later patented invention.”

  1. Relevant Articles

It is stipulated in Paragraph 1 of Article 92 of the Japanese Patent Law that a patentee of a later filed application has the right to seek a non-exclusive license for an earlier filed application, and also in Paragraph 2 of Article 92 that a patentee of an earlier filed application, who is called in for consultation regarding permission to work a patented invention, has the right to seek a non-exclusive license of the later filed patented invention.

This stipulation in Paragraph 2 of Article 92 is based on the premise that the patentee of the earlier filed application is clearly unable to freely work the later patented invention.

As the above judgment shows, it is clear this stipulation should be interpreted as meaning that the patentee of an earlier filed application is not able to work a later filed patented invention because the later filed patented invention is within the technical scope of the patentee’s own patented invention.

Furthermore, Paragraphs 3 and 4 of Article 92 stipulate that both patentees have the right to appeal to the Commissioner of the Japanese Patent Office for a ruling to establish a non-exclusive license when an agreement cannot be reached or consultations cannot be held.

  1. Conclusion

As shown above, a patentee of a later filed patented invention which uses an earlier filed patented invention has the right to seek to a non-exclusive license from a patentee of an earlier filed patented invention.  When an agreement cannot be reached, they can appeal to the Commissioner of the Japanese Patent Office for a ruling to establish a non-exclusive license.

As a result, a patentee of a later filed patented invention can work the later filed patented invention based on a payment of a certain amount.

Generally speaking, since an invention used in a later filed patent is more attractive and competitive, there may be situations where the patentee of an earlier filed patent would have to work the later filed patented invention.  In such a case, the patentee of the earlier filed patented invention is at much less advantage.

In order to avoid such situations, it is considered desirable that the patentee of an earlier filed patented invention continuously file patent applications to prevent others from obtaining patents for later filed applications when others would make improvements and inventions using the earlier filed patented invention.