Since last year the commissioner Ms. Naoko Munakata of the Japan Patent Office (“JPO”) has engaged in discussions of a rapid and effective means of international dispute resolutions and model licensing negotiation processes regarding the standard essential patents (“SEPs”). In consideration with the discussions and the opinions of key industry organization, (1) the JPO has expanded the advisory opinion system for an essentiality check of SEPs by the JPO panel. Furthermore, (2) the JPO has issued “the Guide to Licensing Negotiations involving SEPs”. In harmony with the JPO’s movement, (3) the International Arbitration Center in Tokyo (“IACT”) which handles SEP disputes was established.
1. Advisory opinion as an essentiality check of SEPs by JPO panel
[Refer to the JPO website: https://www.jpo.go.jp/torikumi_e/t_torikumi_e/hantei_hyojun_e.htm]
The JPO started the operation for essentiality check of the SEPs on April 1, 2018. Under the operation a JPO panel makes an advisory opinion (“Hantei” in Japanese) regarding the technical scope of SEPs under the Article 71 of the Japanese Patent Act.
The purpose of the operation is to facilitate licensing negotiations and dispute resolutions over SEPs through essentiality check by an advisory opinion outside the court system.
It should be noted that the advisory opinion does not have any legal binding force. Furthermore, a SEP holder can only allege that the accused products or process falls within the technical scope of the patented inventions but that the alleged infringer “cannot” challenge the validity of the patent under the advisory opinion system.
Regardless of such limitations, adversary opinions of JPO panels with its specialized technical knowledge will be more than expected by our society and respected by authorities.
2. The Guide to Licensing Negotiations involving SEPs by the JPO
[Refer to the JPO website: https://www.jpo.go.jp/shiryou/kijun/kijun2/files/seps-tebiki/guide-seps-en.pdf]
The JPO issued “The Guide to Licensing Negotiations involving Standard Essential Patents” (“Guide”) on June 5, 2018.
The Guide mainly explains various issues regarding licensing negotiations based on good faith and also efficiency and royalty calculation methods referring to the latest case law not only in Japan but also in the U.S., Europe and other foreign key countries. The Guide is also worth reading as a brief summary of case law in such key countries.
As pointed out in the Guide itself, it does not have any legal binding force but serves as a guide to actual and potential negotiating parties to a dispute over alleged SEPs.
The Guide is also expected to serve as a tool to effectively solve the disputes over SEPs together with the above-mentioned advisory opinion by JPO panels.
3. International Arbitration Center in Tokyo
[Refer to the IACT website: https://www.iactokyo.com/]
IACT was established on September 3, 2018 and has started its operation in order to solve global IP disputes effectively and rapidly outside the court system.
IACT gathers some of the world’s most experienced and respected former judges who have agreed to be available to arbitrate IACT disputes such as former Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit, former Chief Judge Toshiaki Iimura of the Intellectual Property High Court of Japan and so on.
According to its website, IACT aims to proceed with a one-year time limit from the appointment of the third arbitrator.
Japan Intellectual Property Arbitration Center has already existed in Japan as the authority to arbitrate over IP disputes. However, IACT will become another option to effectively and rapidly solve global IP disputes, especially over the SPEs outside the court system.