Research Study on the Situation o Dispute Resolution over Standard Essential Patents (Summary)
Recent years, in the midst of the progress of the Fourth Industrial Revolution, withthe spread of the Internet of Things (IoT), the connections between various things(devices, companies, infrastructure, etc.) is increasing. With regard to the standard(norm) utilized for social infrastructure, such concerns are pointed out that the disputes
over patents essential to the implementation of the standard (standard essentialpatents) have negative influences on many fields such as economy and industry. Inaddition, with the spread of the above-mentioned technology, it is also worried thatbusiness operators in various fields may be involved in disputes over standard essential
patents.
Based on the above, such countermeasures are considered necessary as to reducethe costs of license negotiations and dispute resolution with regard to standard essential
patents and to promote smooth exploitations of patented inventions, and therefore theMinistry of Economy, Trade and Industry and the Japan Patent Office considered theavailability of adjudication (award) system as means that the public administrationenters between the patent holder and the user to determine appropriate license fees,keeping in mind that it does not unduly harm the patent holder's right, and compiled thereport.
However, for the reason that the adjudication (award) system is a system in which
only the implementer can request, only Japanese patent rights are objected so as not tolead to a global resolution, and it is difficult for the Japan Patent Office to set appropriate
license conditions individually, it has been judged that it is difficult to introduce thesystem for standard essential patents.
On the other hand, since such the demand remains without change so as to provide
persons other than the telecommunications industry and electronics industry that havepreviously been involved in disputes over standard essential patents, small and medium
enterprises, and companies with little know-how with information about matters to beconsidered in license negotiations (basic issues such as views of major judicial precedents,
how to proceed with negotiations, and elements to be taken account), and provide early
resolution of disputes between different industry sectors, and to reduce its processing
costs, on March 2018 (Heisei 30), the draft guidelines was formulated to summarize
issues that both the right holder and the implementer should consider in licensenegotiations of standard essential patents.
Thereafter, calling for public comments between March 9 and April 10, 2018 (Heisei30), on the basis of the same public comments, June 5 of the same year, the "Guide toLicensing Negotiations involving Standard Essential Patents" was published. The guidesummarizes issue concerning licensing negotiations as objectively as possible, such as
the method proceeding with license negotiations, the method of calculating royalty, etc.
and explains how to behave in order to be recognized as to “negotiate with good faith”,
for the implementer to avoid injunction and for the patentee to likely obtain appropriate
consideration.
However, as new decisions on disputes over standard essential patents have been
made constantly in the various foreign courts, from the viewpoint that further
development of technology (especially communication technology) in the future isexpected, it is predictable to increase disputes over standard essential patents.
In light of such situation, the information provided in the “Guide to Licensing
Negotiations involving Standard Essential Patents” likely makes no sense if it becomesold.
Accordingly, in the research study, it was aimed to prevent disputes over standard
essential patents or to provide early resolutions, by collecting, organizing, and publishinglatest court cases, public organizations’ views, and literatures.