5 Desirable Monopolistic License System (*)
In relation to patent rights and other industrial property rights under the current law, exclusive licenses(exclusive right to use) and monopolistic non-exclusive licenses (monopolistic non-exclusive right to use) areavailable as forms of monopolistic licenses that limit licensees to a single actor. Of these, registration is required
for the coming into force of a statutory exclusive license (exclusive right to use). However, the amount ofconsideration for an exclusive license and other items were deleted from the matters to be registered through the2008 legal revision.
However, the utilization ratio of the registration system is low, and the number of such exclusive licenses forpatent registered annually remains around 300. In addition, although the system whereby a non-exclusive
license can be asserted against a third party without registration was introduced in relation to non-exclusive
licenses through the 2011 legal revision, the system is inconvenient in that, in relation to a monopolistic
non-exclusive license (monopolistic non-exclusive right to use), the licensee can neither assert the monopolistic
exploitation of the relevant patent right against a third party nor directly request an infringer who works thepatented invention without authority suspend the infringement.
Therefore, this research study was conducted in order to prepare basic materials to be used in considering
the necessity of establishing a new system that eliminates the problems of the monopolistic license-related
systems under the current law.

I

Introduction

1

Background andResearch Study

PurposeofThis

In relation to patent rights and otherindustrial property rights under the current law,
exclusive licenses (exclusive right to use) andmonopolistic
non-exclusive
licenses(monopolistic non-exclusive right to use) areavailable as forms of monopolistic licenses that
limit licensees to a single actor. Of these,
registration is required for the coming into force
of a statutory exclusive license (exclusive right touse). However, the amount of consideration for an
exclusive license and other items that had beenrequired to register an exclusive license were
excluded from the matters to be registeredthrough the 2008 legal revision.
However, the utilization ratio of theregistration system is low for the reasons of aburden of registration and license tax and otherexpenses, administrative burden arising from theprinciple of joint application for registration,
divulging of trade secrets arising from thedisclosure of the scope of a license, anddisharmony with the systems of other majorcountries. The number of exclusive licenses forpatent registered annually remains around 300.
For monopolistic non-exclusive licenses, thesystem whereby a non-exclusive license can beasserted against a third party without registration
was introduced in relation to non-exclusive
licenses through the 2011 legal revision. However,monopolistic working is nothing more than thatbased on an agreement between the parties
concerned and cannot be asserted against a third
party. Therefore, there is a limit that if thelicensor assigns the patent right to a third party,
the licensee cannot assert the monopolistic
exploitation of the patent right, etc. against thethird party. In addition, there is an inconveniencethat the licensee cannot directly request an
infringer who works the patented invention, etc.
without authority to suspend the infringement.
This research study is intended to conduct
basic research that is to be used as a premise of
considering the necessity of establishing a new
system that eliminates the aforementioned
problems of the monopolistic license-related
systems under the current law.
2

Method of Conducting This ResearchStudyIn this research study, domestic questionnaire
and interview surveys were conducted tounderstand practical problems and needs
concerning monopolistic licenses. In addition,interview surveys were conducted withintellectuals, such as university professors andattorneys at law, to obtain knowledge from the(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23

● 1 ●
●
－40－
40 ●

perspectives of jurisprudence and legal practice.
Furthermore, overseas questionnaire surveys
were conducted for the United States, Germany,
France, the United Kingdom, China and South
Korea
tounderstandthemonopolistic
license-related systems of other countries.
Moreover, books, papers, court precedents andother materials were also studied and examined.

Ⅱ Current
SituationoftheMonopolistic
License-Related
Systems
1

Current Monopolistic License-Related
Systems in Japan (Mainly for Patents)

The Patent Act provides for two types oflicenses, specifically, exclusive licenses andnon-exclusive licenses. On the other hand, inpractice, monopolistic non-exclusive licenses arewidely used as one type of non-exclusive license
though it is not provided for by law.
(1) Exclusive License
An exclusive license is a right whereby aperson other than the patentee can work thepatented invention in a monopolistic andexclusive manner, and it is understood as having
the nature of a real right.
The establishment of an exclusive licensedoes not come into force only through theconclusion of a contract, and it comes into force
only after it is registered. If the establishment ofan exclusive license comes into force throughregistration, the exclusive license can be asserted
against a third party. It is thus possible to assert
the monopolistic nature of the exclusive license(in relation to the scope for which the exclusive
license has been established, only the exclusive
licensee can work the patented invention, andneither the patentee nor the assignee of thepatent right can establish or grant a license toanother person) against a third party.
The Patent Act grants to an exclusive
licensee the right to claim damages against a third
party who works the scope of the patented
invention for which the exclusive license has
been established. The Act also grants to an
exclusive licensee the right to claim an injunction
against a third party who works or is likely towork the scope of the patented invention forwhich the exclusive license has been established.
The registration procedure requires that theexclusive licensee and the patentee jointly file anapplication for registration. However, theexclusive licensee alone can register a licensewith the written consent of the patentee.
The matters to be registered include thearea, period and content of an exclusive license interms of the scope of the exclusive license as wellas the domicile or residence and name of the
exclusive licensee. The amount of consideration
for the exclusive license or the method or time of
payment thereof was deleted from the matters to
be registered. All the matters registered aredisclosed.
(2) Monopolistic Non-Exclusive License
A monopolistic non-exclusive license isconsistently evaluated as a non-exclusive licenseunder the Patent Act. Therefore, it is considered
as having the nature of a claim. The granting of amonopolistic non-exclusive license comes into
force through the conclusion of a contract. A
license pertaining to a monopolistic non-exclusive
license (the right to claim inaction by which thelicensee requests the patentee, etc. not toexercise the right to claim an injunction or otherrights) can be asserted against a third party as a
non-exclusive license under the Patent Act. With
regard to this assertion against a third party, theregistration system was abolished through the2011 revision of the Patent Act, and the system
whereby a non-exclusive license can be asserted
against a third party without registration was
introduced.
There was a widespread practice where aperson who receives the assignment of a patentright does not exercise the right to claim an
injunction against a non-exclusive licensee even
if the non-exclusive licensee has not beenregistered. However, actors who exercise apatent right have been diversifying in recent
years, and this conventional practice has not been
maintained. Therefore, there has been an
increasing risk that a non-exclusive licensee who
has not been registered becomes subject to aclaim for an injunction, etc.
The monopolistic nature of a monopolistic
non-exclusive license (the patentee cannot granta license for the scope covered by themonopolistic non-exclusive license to anotherperson) is understood as being effective only
between the parties concerned based on aclaim-like agreement. Therefore, a monopolistic
non-exclusive licensee has no means of assertingmonopolistic working against a third party suchas the assignee of the patent right.
The Patent Act includes no provisions that
grant to a non-exclusive licensee the right to

● 2 ●
●
－41－
41 ●

IIPIIP
Bulletin
Bulletin2014
2014Vol.23
Vol.23

claim damages against a third party who works
the patented invention without authority. The
same goes for monopolistic non-exclusive
licenses.
On the other hand, there are many court
precedents in which a monopolistic non-exclusive
licensee exercises the right to claim damages
against a third party who works the patented
invention, etc. without authority. In many court
precedents, the court denied the right to claim an
injunction specific to monopolistic non-exclusive
licensees. However, in some of them, the court
upheld the right to claim an injunction based on
the obligee’s subrogation. There is a view thatsuch cases are those where the patentee, etc. atleast is considered as having had imposed theobligation to eliminate infringement under anagreement on the monopolistic non-exclusive
license, irrespective of explicitly or implicitly, andthe patentee’s failure to perform this obligation isrequired.
2

Status of Use of the “Monopolistic
License-Related Systems” in Japan andMatters to be Considered(1) Status of Use
With regard to exclusive licenses andexclusive right to use, the number of exclusive
licenses for patents and exclusive right to use fortrademarks are larger than exclusive licenses forutility models and that for designs. The number
for patents is between 188 and 349 while that for
trademarks is between 215 and 344.
According to the questionnaire survey, forpatents, 5.5% of licensors and 12.9% of licensees
use the exclusive license system. On the other
hand, 26.2% of licensors and 20.2% of licensees
use the monopolistic non-exclusive license
system. According to the results of the domestic
interview survey, monopolistic non-exclusive
licenses/non-exclusive rights to use are mainly
used as monopolistic licenses, and the number ofcases where an exclusive license/exclusive rightto use is used was 0 to 2.
Some answered that use of a monopolistic
non-exclusive license/non-exclusive right to use
suffices because the parties to a contract canarrange the person who decides litigation policy,
the person who assumes command of the conductof a lawsuit, and the person who bears costs oflitigation.
On
the
other
hand,
some
pharmaceutical companies answered that they
only use exclusive licenses as monopolistic
licenses so that they can exercise the right to

IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23

claim an injunction without fail in order toeliminate generic drugs. In addition, multiple
companies answered that they had registered
their exclusive licenses when filing an application
for registration of extension of the duration of thepatent rights licensed.
(2) Status of Consideration at Councils, etc.
in the Past
(i) Content of Consideration at a Private Study
Group of the Commissioner of the JPO,
“Patent System Study Group”
The Patent System Study Group, which is a
private study group of the Commissioner of the
JPO, was established in January 2009. “Desirable
monopolistic
license-related
system”
wasmentioned in the summary of issues concerning
promotion of utilization of patents that is intended
to improve convenience for patentees andlicensees and promote innovation by active
utilization of patent rights. The members of theStudy Group expressed their views about a claim
for an injunction made by a monopolistic licensee
who has not been registered, problems withregistration
anddisclosure
concerningmonopolistic licenses, and consistency between
litigation law and substantive law, in considering a
new monopolistic license system.
(ii) Content of Consideration at the 25th Meetingof the Patent System Subcommittee of theIntellectual Property Policy Committee underthe Industrial Structure Council in April
2010１
The members of the Subcommittee
considered the coming into force of a license,
requirements for asserting a license against athird party, matters to be registered/disclosed,
and the propriety of granting to a licensee who
has not been registered the right to claim an
injunction/damages against a person who works
the patented invention without authority, under
the following idea: “Exclusive licenses andmonopolistic non-exclusive licenses under thecurrent system are not considered as sufficiently
satisfying the needs of those who intend to use
monopolistic licenses. The development of thefollowing monopolistic license system should beconsidered in order to satisfy these needs.”

● 3 ●
●
－42－
42 ●

(iii) Content of Consideration at the 34th Meetingof the Patent System Subcommittee of theIntellectual Property Policy Committee underthe Industrial Structure Council in February
2011２
Exclusive
licensesandmonopolistic
non-exclusive licenses under the current law are
not considered as sufficiently satisfying the needsof those who intend to use monopolistic licenses.
Therefore, discussions should be held toward thedevelopment of a new monopolistic license
system that satisfies these needs.
On the other hand, with regard to a desirable
monopolistic license system, the members of the
Subcommittee concluded that although it isnecessary to comprehensively review the current
systems in many respects, such as therequirements for the coming into force of alicense, matters to be registered/disclosed, theright to claim an injunction, and the right to claim
damages, it is appropriate to hold discussions
while paying attention to the extensive
remodeling of the JPO’s operational systembefore developing a new system.
(iv) Content of Consideration at the 39th Meetingof the Patent System Subcommittee of theIntellectual Property Policy Committee underthe Industrial Structure Council in February
2013３
With regard to a desirable monopolistic
licensesystem,itisnecessarytocomprehensively review the current system inmany respects, such as the requirements for the
coming into force of a license, matters to beregistered/disclosed, the right to claim an
injunction, and the right to claim damages,
through comparison with those for the current
exclusive licenses. The system whereby anon-exclusive license can be asserted against athird party without registration was introduced
through the 2011 legal revision, and the revised
law came into force in April 2012. The membersof the Subcommittee concluded that discussions
would be continuously held on the necessity of
the reform of the system by finding out the needfor introduction of a new monopolistic license
system while understanding the actual conditionsof use of said system.
(3) Matters to Be Considered (Mainly for
Patents): Results of the Domestic
Questionnaire Survey(i) Propriety of Granting the Right to Claim an
Injunction based on a Monopolistic

Non-Exclusive license
For Q-E8 of whether the respondent would
use a system whereby the right to claim an
injunction is granted in relation to a monopolistic
non-exclusive license for a patent if the existenceof a special provision on the monopolistic natureof the license is proven, 17 respondents (6.0%)
answered “Definitely want to use the system”
while 96 (33.7%) answered “Want to use thesystem as the occasion arises.” Approximately
40% of all respondents answered that they want
to use the system, and they seem to wish to use
the claim for an injunction system.
(ii) Whether Exclusive Licenses Should be
Abolished
For Q-B4 of whether the respondent hascome to think of promoting establishment of
exclusive licenses due to reduction of the mattersto be registered for an exclusive license,” 22
respondents (7.7%) answered that they havecome to think of promoting the establishment of
exclusive licenses. It thus seems that the
reduction made the system more user-friendly tosome degree.
Many of those who do not use exclusive
licenses but do use monopolistic non-exclusive
licenses answered that the “licensor also works
the invention in relation to the scope for which alicense has been established” (26 respondents(35.1%) for Q-B2 and 35 respondents (45.5%) for
Q-C1). This seems to point out that the
respondents use the exclusive license system andthe monopolistic non-exclusive license system ona case-by-case basis, for example, themonopolistic non-exclusive license system isused in cases where the licensor also works theinvention.
In response to Q-B3 on whether there havebeen cases where the respondent concluded acontract on establishment of an exclusive license
but it did not actually lead to registration of the
exclusive license, one respondent answered as
one of the reasons for such cases that the“registration procedures are cumbersome.” Forother questions (Q-B4, Q-B2, and Q-C3), a
certain number of respondents answered that the“registration procedures are cumbersome,” as areason for not using (or not intending to promote
the use of) exclusive licenses. It thus seems that
some
users
considerthecumbersome
registration procedures a problem with theexclusive license system.

● 4 ●
●
－43－
43 ●

IIPIIP
Bulletin
Bulletin2014
2014Vol.23
Vol.23

(iii) Necessity of a Registration System
The results of Q-E1 about deletion ofmatters to be registered revealed that the
majority (202 respondents; 70.9%) answered “noitem should be deleted” from the matters to beregistered in registering an exclusive licenseunder the current law. For Q-E2 of whether the
respondent would want to actively use exclusive
licenses if the item(s) the respondent chose in
Q-E1 are deleted from the matters to beregistered for an exclusive license, no respondent
answered “Definitely want to use,” 21
respondents (7.4%) answered “Want to use as theoccasion arises,” and 150 respondents (52.6%)
answered “No opinion.” In addition, 44
respondents (15.4%) answered “Will not use.” Asreasons thereof, they answered that they want tosecure working by the licensor and that there isno need to use exclusive licenses. In Q-E3, 65
respondents (22.8%) answered “Yes” in response
to a question of whether deletion of a matter to beregistered would cause any inconvenience fromthe standpoint of a third party (or licensor or
licensee).” As specific examples of inconvenience,
many respondents answered that the relationshipof rights would become difficult to understand.
Taking into account that many respondents
answered that no item should be deleted from thematters to be registered in Q-E1, it seems thatthe existence of many matters to be registered is
not a reason for users’ not using the exclusive
license system under the current law.
(4) Matters to Be Considered (Mainly for
Patents): Domestic Interview Survey(i) Propriety of Granting the Right to Claim an
Injunction
There was the following opinion: For amonopolistic non-exclusive license, the status ofa person who has monopolistic control over apatented invention and can enjoy profits
therefrom in a monopolistic manner is createdbased on a contract; therefore, a monopolistic
non-exclusive license can be equated with a real
right in terms of the content of right, and thus,
there seems to be theoretically no problem in
granting the right to claim an injunction based ona monopolistic non-exclusive license.
On the other hand, there was also an opinion
that the right to claim an injunction is strong rightto affect for business, then the right to claim an
injunction should be granted to a person who
registered and noticed the right to public.

IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23(ii) Whether Exclusive Licenses Should be
Abolished
Opinions on whether exclusive licenses
should be abolished were divided depending on
the way of designing a new system. If amonopolistic license system that is close to thecurrent exclusive license system is created,exclusive licenses should be abolished. In
addition, it is desirable to have registration serve
not as a requirement for the coming into force of alicense but as a requirement for asserting alicense against a third party. There was also thefollowing opinion: With regard to transfer of apatent right, registration is required for the
coming into force of the transfer; however, in thesituation where the effect of an administrative
disposition, such as a decision in a trial forinvalidation and a ruling, is questioned, thesystem whereby registration is required for the
coming into force should be maintained for thesake of determining the parties concerned.
(iii) Necessity of a Registration System
Some said that not coming into force without
registration has some meaning while others said
that it is better not to introduce a registration
system as a new system because a registration
system is cumbersome for both the JPO andusers.
There was an opinion that although aregistration system is desirable from theperspective of a system whereby the relationshipof rights is clearly organized, if Japan adopts asystem that is not often adopted in othercountries, it would be necessary to consider
making law from the perspective of harmonization,
apart from the perspective of which system issuperior. On the other hand, many answered thatpublic notice is necessary as it is better in thatthey can know who can exercise rights.
3

Other
Countries’
Monopolistic
License-Related Systems

Surveys were conducted on working by thelicensor in monopolistic licensing, assertion of alicense contract against a third party, successionof a monopolistic license contract to the assigneeof the patent right, etc. in cases where thelicensor assigns the patent right, etc., thelicensor’s exercise of the right to claim an
injunction or the right to claim damages after
concluding a monopolistic license contract, thelicensee’s exercise of the right to claim an
injunction and the right to claim damages, and the

● 5 ●
●
－44－
44 ●

license registration system.
(1) Monopolistic Licenses in the UnitedStates
It is considered that there are two types ofmonopolistic licenses in the United States. An“exclusive license” enables the licensee to
exclude all persons, including the patentee, forthe scope for which the license has been
established. This type of license also eliminatesworking by the licensor for the scope for which alicense has been established, and is amonopolistic license in a real sense. Another typeof license is a “sole license,” which contains anagreement that the licensor will not grant alicense to another person for the scope for which
the license has been established. These types oflicenses differ in the advisability of working by
the licensor. Both the licensees of exclusive
licenses and those of sole licenses can file alawsuit under their own names and can seek
remedies for infringement, including an
injunction. However, the patentee is deemed to
be an indispensable party for a lawsuit filed by thelicensee without substantial right of an exclusive
license or a sole license. Therefore, such alicensee can file a lawsuit only jointly with thepatentee. The licensee with substantial right canfile a lawsuit. After concluding a monopolistic
license contract, the licensee can assert therelationship of rights that has been establishedbetween the parties against the licensor and athird party other than the licensee. Whether amonopolistic license contract is succeeded or not
differs depending on the terms of the contract.
Although there is no license registration system
under law, it is possible to record a license in afile stored by the USPTO.
(2) Germany
It is considered that there are two types ofmonopolistic licenses in Germany. “Exclusive
license” is one type of license whereby all
persons, including the patentee, are excluded forthe scope for which the license has been
established. Another type of license is “solelicense” whereby the licensor and the licensee
agree that no license would be granted to anotherperson for the scope for which the license has
been established and the licensor can work thepatented invention even after the granting of thelicense without obtaining a non-exclusive licensefrom the licensee. These types of licenses are notdifferent in the succession of a license contract
and other points, except the difference in terms ofworking by the licensor. A licensee can claim
against a third party an injunction and damages
for the scope for which a license contract has
been concluded. It is possible to register a license,
but registration only has a confirmatory effect. It
is impossible to register a monopolistic license
for a trademark right. The register describes only
the fact that a monopolistic license has been
granted and does not describe either the parties
to the license contract or the scope of the license.
(3) France
It is considered that there is one type ofmonopolistic
licenseinFrance.
Frenchintellectual property law does not define
exclusive license. A licensor can file an
infringement lawsuit. In addition, monopolistic
patent licensees are governed by the conditions
stipulated in Article L615-2 of the Intellectual
Property Code of France. That is, “Infringement
proceedings shall be instituted by the owner ofthe patent. However, the beneficiary of an
exclusive right of working may, except asotherwise stipulated in the licensing contract,
institute infringement proceedings if, after notice,
the owner of the patent does not institute suchproceedings.”
Where a monopolistic licensee files aninfringement lawsuit by him/herself or where amonopolistic licensee intends to obtain aprovisional injunction, it is necessary that therelevant monopolistic license contract has beenregistered. In order to make it possible toexercise rights against a third party, it isnecessary to have a license contract registered ona related register (that is, patent register,
trademark register or design register according to
the type of the intellectual property right subject
to a license). However, registration of a license
contract is not one of the conditions for theeffectiveness of a contract between a licensor anda licensee.
(4) United Kingdom
It is considered that there are two types ofmonopolistic licenses in the United Kingdom.
“Exclusive license” is a license that excludes all
persons (including the patentee or the patentapplicant) other than the licensee while “solelicense” reserves the licensor’s right to work.
With regard to assertion of a license contract
against a third party, for an exclusive license, thelicensee can also assert rights against anotherlicensee who has subsequently obtained rights
equivalent to those of said licensee for the same

● 6 ●
●
－45－
45 ●

IIPIIP
Bulletin
Bulletin2014
2014Vol.23
Vol.23

patent only where the license has been registeredor the third party (said another licensee) is awareof the license. However, in order to claim an
injunction and damages, a licensee must file alawsuit jointly with the licensor. On the other
hand, the licensee of a sole license has no right tofile a lawsuit concerning a patent infringement.
Therefore, where a licensee files a lawsuit
concerning infringement committed by a third
party, it is necessary to conclude a contract to theeffect that the licensee does so on behalf of thepatentee. It is considered that a license contract
is not naturally succeeded. However, once alicense is registered, an assignee who
subsequently obtains the right cannot deny being
aware of the license.
There is a license registration system forpatents and trademarks as well as designs
registered in the United Kingdom. There is nolicense registration system for unregistered
designs in the United Kingdom.
(5) China
There are two types of monopolistic licenses
in China, and “monopolistic license (Article 25 of
the Interpretation of Some Problems with
Application of Law in the Proceedings ofTechnical Contract Disputes)” corresponds to the
exclusive license system in Japan. On the other
hand, “exclusive license (Article 25 of theInterpretation of Some Problems with Applicationof Law in the Proceedings of Technical Contract
Disputes) corresponds to the monopolistic
non-exclusive license system in Japan. A
monopolistic license does not reserve thepatentee’s right to work while an exclusive
license reserves the patentee’s right to work.
The licensee of a monopolistic license can file alawsuit against infringement with the court and,prior to filing such a lawsuit, can apply with thecourt for an injunction against the infringer’s actof infringing the patent right. Moreover, such alicensee can apply with the administrative
management department for processing. On theother hand, the licensee of an exclusive license
can file a lawsuit jointly with the patentee, andcan file an infringement lawsuit by him/herself if
the patentee does not file an infringement lawsuit.
These types of licenses are the same in otherpoints, and it is considered that a licensee canassert rights covered by a monopolistic license
contract against the licensor and third parties
other than the licensee.
There is a license contract registration
system in China. Trademark license contracts can

IIP
Bulletin2014
2014
Vol.23
IIP Bulletin
Vol.23be registered with the Trademark Office whilepatent license contracts can be registered with
SIPO. Although a license comes into force
without registration, registration serves as arequirement for asserting the relationship ofrights that has been established between theparties to the license contract against a third
party.
(6) South Korea
There are two types of monopolistic licenses
in South Korea. An “exclusive license (Article
100 of the Patent Act)” is a license that excludes
all persons, including the patentee, other than thelicensee for the scope for which the license has
been established. On the other hand, a“monopolistic
non-exclusive
license(not
stipulated by law or regulation” is a license that ischaracterized by that the patentee (the licensor)
and the licensee agree that no license would be
granted to another person and by that thepatentee (the licensor) can use the patented
invention with no constraint without waiting toobtain a non-exclusive license from the licensee
even after the granting of the license. An
exclusive license does not reserve the patentee’sright to work while a monopolistic non-exclusive
license reserves the patentee’s right to work. An
exclusive license comes into force through its
registration, and registration enables the licensee
to assert the license against a third party andexercise the right to claim an injunction and theright to claim damages under the licensee’s own
name. On the other hand, the monopolistic natureof a monopolistic non-exclusive license cannot beregistered.
However,registrationofamonopolistic non-exclusive license as a
non-exclusive license makes it possible for the
licensee to assert the license against the assigneeof the patent right, etc. in cases where thelicensor has assigned the patent right, etc. In
addition, the licensee of a monopolistic
non-exclusive license is neither permitted toassert the license against a third party nor toclaim an injunction or damages.

Ⅲ Documents Concerning Monopolistic
License-Related Systems
With regard to the granting of the right toclaim an injunction specific to monopolistic
non-exclusive licensees, many scholars say thatsuch right should not be granted. Moreover, they
say that it is necessary to be careful in granting
the right to claim an injunction to such licensees

● 7 ●
●
－46－
46 ●

for the purpose of preventing causing
unanticipated disadvantage to third parties.
There are some court precedents thatmonopolistic non-exclusive licensees are to be
granted the right to claim damages specific tothem. Even if the patentee is not recognized ashaving the obligation to eliminate infringement,
the monopolistic non-exclusive licensee who has
the right to claim no granting of a license toanother person has interests protected by law.
Therefore, it is also considered that an obligee's
subrogation by deeming such interests protectedby law to be a preserved claim should bepermitted.
With regard to exercise of subrogation, there
is an idea that subrogation is permitted only
where there is a special provision on the
obligation to eliminate infringement based on
which the patentee exercises the right to claim an
injunction and the right to claim damages. In thiscase, such special provision is not limited toeither an implicit or explicit one. In addition, it isconsidered that if a patentee grants a license toanother person in violation of the contractual
obligation to the monopolistic non-exclusive
licensee, the monopolistic non-exclusive licensee
cannot exercise rights against said anotherperson.
(Senior researcher : Takenobu URAZONO)
25th Meeting of the Patent System Subcommittee of
the Intellectual Property Policy Committee under the
Industrial Structure Council, Material 3 “Legislative
Challenges of the Patent System,” pages 7 to 8.
http://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/tokk
yo_shiryou025/3.pdf[Last access date: February 20, 2014]２
34th Meeting of the Patent System Subcommittee of
the Intellectual Property Policy Committee under the
Industrial Structure Council, Material 1 “Legislative
Challenges of the Patent System (draft report),” pages
11 to 12.
http://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/tokk
yo_syiryou034/01.pdf[Last access date: February 20, 2014]３
39th Meeting of the Patent System Subcommittee of
the Intellectual Property Policy Committee under the
Industrial Structure Council, Material 2 “Toward Early
Establishment of Strong and Stable Rights andImprovement of User-Friendliness (draft report),” page30
http://www.jpo.go.jp/shiryou/toushin/shingikai/pdf/tokk
yo_shiryou039/02.pdf[Last access date: February 20, 2014]
１

● 8 ●
●
－47－
47 ●

IIPIIP
Bulletin
Bulletin2014
2014Vol.23
Vol.23