Now, provisional exclusive and/or non-exclusive licenses can be registered at the Japan Patent Office based on a license agreement effective before an application is granted a patent. The new recordation system will provide protection for the licensee regarding the pending patent application against any third party who subsequently acquires the right to the license to the pending patent application or granted patent with respect to either the provisional non-exclusive or provisional exclusive license.
Therefore, even if the licensor (applicant or patentee) goes bankrupt, the bankruptcy trustee will not be permitted to terminate or change the license agreement once it is registered with the Patent Office.
- There are two types of provisional licenses, “provisional exclusive license” and “provisional non-exclusive license”. A provisional license can be granted within the scope of the disclosure of the originally filed patent application.
- A provisional exclusive license goes into effect upon registration thereof at the JPO. Once a provisional non-exclusive license is registered at the JPO, it shall be effective against any assignee of the patent application.
- A registered provisional exclusive and/or non-exclusive license remains effective even after amending the application. Furthermore, when a divisional application is filed from a parent application under which a provisional exclusive and/or non-exclusive license has been registered, a provisional exclusive and/or non-exclusive license is deemed granted under the divisional application as well.
- Where a provisional exclusive or non-exclusive license is registered under a patent application, the applicant may withdraw the patent application only with the consent of the registered licensee. (Article 38bis)
- When a patent is granted for the patent application, the provisional exclusive license and/or provisional non-exclusive license loses its provisional status and matures into an exclusive license and/or a non-exclusive license respectively.
- When a patent application is finally rejected or abandoned, the provisional exclusive license and/or provisional non-exclusive license lose its effect.
In order to preserve the confidentiality of the content of the agreement, the licensee’s name, the license’s scope of claims, and the name of the bankruptcy trustee will not be made public for non-exclusive licenses. (via Keisen Associates)
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