7 Desirable System Concerning Licenses and Right to Obtain a
PatentIn recent years, it has become essential to effectively exploit intellectual property, including patents, inorder to promote innovation and strengthen the industrial competitiveness of Japan. In such circumstances,a Fiscal 2008 JPO Study Report on the Issues of the Industrial Property System, titled “Further
Exploitation of Intellectual Properties,” put into shape a direction recognizing that it is reasonable tointroduce the system of automatic perfection as a perfection system for licenses, to establish a newmonopolistic license system, and to permit the establishment of a pledge on the right to obtain a patent,
from the perspective of protection of licensees and increasing needs for early exploitation from the stage offiling a patent application.
In this research and study, we conducted questionnaire and interview surveys in Japan as well as
overseas surveys (the United States, Germany, the United Kingdom, France, China, and South Korea) on
these matters. We thereby conducted surveys and analysis on needs in Japan as well as from theperspective of harmonization of systems with other countries.

Ⅰ Introduction
1

Background and purpose
research and studyofagainst third parties without authority to a certain
extent, even if the license is not registered with
the Japan Patent Office (JPO); (iii) It isreasonable to permit the establishment of apledge on the right to obtain a patent for which an
application is pending, which is prohibited under
the current system.
In this regard, it is necessary to moreaccurately understand the matters pointed out
concerning the issues related to the current
system, which served as a premise of discussion,as well as needs and problems in terms ofpractice, in introducing the system of automatic
perfection, establishing a new monopolistic
license system, and permitting the establishmentof a pledge. In addition, it is necessary to conduct
further survey and analysis on the systems ofothercountries
in
order
to
promoteharmonization of systems with other countries.
Consequently, this research and study was
conducted through survey and analysis of mattersconcerning licensing and the right to obtain apatent, including the points at issue that were
newly pointed out in the FY2008 Study, with theaim of contributing to discussion on a desirable
system concerning licenses and the right toobtain a patent in Japan.

this

In recent years, it has become essential toeffectively exploit intellectual property, including
patents, in order to promote innovation andstrengthen the industrial competitiveness ofJapan. In particular, the situations in which apatent is exploited through licensing are expected
to increase due to the future progress of open
innovation. In addition, the economic value of theright to obtain a patent is increasing, and there is
the increasing need for early exploitation fromthe stage of filing a patent application. Under suchcircumstances, a research and study titled“Further Exploitation of Intellectual Properties”(hereinafter called “FY2008 Study”) was
conducted in fiscal 2008, against a backdrop of theawareness of the problem that it is necessary toreview the system concerning licenses and theright to obtain a patent.
The FY2008 Study put into shape a directionof the review of the system concerning licenses
and the right to obtain a patent as follows: (i) It isreasonable to introduce a system under which a
non-exclusive licensee is entitled to assert
his/her non-exclusive license against third parties,
as long as the non-exclusive licensee can provethe existence of a license agreement, even if the
non-exclusive license is unregistered (system of
automatic perfection); (ii) It is reasonable toabolish the current exclusive license system andestablish a new monopolistic license system that
grants the right to request an injunction, etc.
IIP Bulletin 2010

2

Method of this research and study

In this research and study, we conductedquestionnaire and interview surveys in Japan andoverseas with regard to (i) perfection of a license,(ii) monopolistic license, and (iii) early
exploitation of the right to obtain a patent, and● 1 ●system was established. The system enables nonexclusive licenses that have been granted basedon a comprehensive license agreement to beregistered collectively in units of license
agreement.
In addition, through revision of the Patent
Act in 2008, a system to restrict disclosure to the
public was introduced with regard to the names oflicensees and the scope of licenses, which
companies, etc. have a strong need to keep secret.

carried out analysis and held discussions based on
the results of those surveys. Incidentally,
overseas questionnaire and interview surveys
covered the United States, Germany, the United
Kingdom, France, China, and South Korea.

Ⅱ Perfection of a License
1

Introduction

Based on the awareness of problems
concerning the current registration system,
FY2008 Study concluded that it was reasonable tointroduce the system of automatic perfection, as asystem that enables appropriate protection of
non-exclusive licenses and is in harmony with thesystems of other countries.
In introducing the system of automatic
perfection, it is necessary to conduct further
survey and analysis on the matters pointed out
concerning the issues related to the registrationrequired perfection system, which served as apremise of discussion, and the systems ofperfection of a license, etc. of other countries.
2

3

Discussion concerning the review of
the registration system(1) Indication of the issues related to theregistration-required perfection system
The following actual practices have been
pointed out as the issues related to theregistration-required perfection system: (i) It isdifficult to register non-exclusive licenses
because in practice, hundreds or thousands ofpatent rights are often licensed in batches; (ii)
The registration rate is extremely low; (iii) Thereare established common practices for which
registration is not a precondition, for example, thepractice in which a person who intends to receive
transfer of a patent right exercises due diligencewith regard to the existence and content ofrelevant licenses before transaction; (iv) Those
who exercise patent rights have been diversifying
due to new entry of overseas enterprises that
acquire Japanese companies.

Outline of the current system(1) Registration-required perfection system
A non-exclusive license that has beenregistered with the JPO can be asserted against
third parties, including a transferee of a relevant
patent right (Article 99(1) of the Patent Act).
In addition, in the case where a licensor
went bankrupt, if a relevant non-exclusive license
had been registered, the right of the licensor’s
bankruptcy trustee to cancel a license agreement
concerning the non-exclusive license would be
restricted (Article 56(1) of the Bankruptcy Act).
Regarding the registration of a non-exclusive
license, there are the non-exclusive license
registration system, under which non-exclusive
licenses are individually registered in units ofpatent right, and the specified non-exclusive
license registration system, under which nonexclusive licenses are registered in acomprehensive manner in units of license
agreement.

(2) Direction of measures
The FY2008 Study proposed the system of
automatic perfection (i) in view of actual practices,and (ii) as a system that is in harmony with thesystems of other countries and is highly usable.
Under the system of automatic perfection, a nonexclusive licensee is entitled to assert the nonexclusive license against third parties as long as
he/she can prove the existence of a license
agreement, even if the non-exclusive license isunregistered.
In introducing the system of automatic
perfection, it is necessary to conduct further
survey and analysis on the matters pointed out
concerning the issues related to the registrationrequired perfection system, which served as apremise of discussion, as well as the system of
perfection of a license, etc. in other countries.
Moreover, as the FY2008 Study pointed out that
“Further discussion would be necessary withregard to legal relationship in the case where a(2) Recent legal revision concerning theregistration system
Through revision of the Act on Special
Measures Concerning Industrial Revitalization
and Innovation of Industrial Activities in 2007, thespecified non-exclusive license registration● 2 ●IIP Bulletin 2010

non-exclusive licensee is entitled to assert the
non-exclusive license to third parties,” it isnecessary to organize this point.

eight enterprises), and that it was common
practice to respect license agreements (five out of
the eight enterprises).

4(2) Low rate of use of the registration
system(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) the registration rate of non-exclusive licenses,(ii) the existence of common practice ofregistering non-exclusive licenses, and so on.
As a result of asking those who answeredthat he/she had obtained non-exclusive licenses
from a Japanese company, etc. about theregistration rate of non-exclusive licenses
obtained, 82.6% answered “a. 0%,” and 4.6%
answered “b. Less than 1%.”

Survey, analysis and discussion in
introducing the system of automatic
perfection(1) Difficulty in using the registration
system(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) reasons for not having registered a nonexclusive license, (ii) reasons for having difficulty
in registering a non-exclusive license, (iii) effectsof the recent reform of the registration system,and (iv) reasons for still having difficulty inregistration in practice.
As a result of asking those who have notregistered a non-exclusive license obtained fromJapanese company, etc. about reasons for nothaving registered, 24.0% answered “4. It isdisadvantageous or difficult to register.”
As a result of asking those who gave theaforementioned answer as reasons for not having
registered about more specific reasons, 87.0%
answered “2. The existence of an agreement will
be disclosed to the public,” 82.6% answered “3.
The content of an agreement (the name of thelicensee, the scope of the non-exclusive license,etc.) will be disclosed to the public,” and 37.0%
answered “1. Registration requires efforts andcosts.”(ii) Results of the interview survey in Japan
The interview survey in Japan covered (i)the cases where a non-exclusive license isregistered.”
As a result of asking interviewees who haveregistered a non-exclusive license obtained fromJapanese company, etc. (six enterprises) about thecases where a non-exclusive license is registered,
one cited the case where the licensor is assumed
to transfer the patent right to a third party andanother cited the case where the licensor could
go bankrupt.
(3) Actual practice in terms of patent righttransactions(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) preliminary search in receiving the transfer ofa patent right, (ii) method of search before
receiving the transfer of a patent, (iii) reasons for
conducting search by due diligence, (iv)disclosure of information to transferor, (v)common practice of not requesting an injunction,etc. against a licensee who has not registered therelevant license, and (vi) whether there has been
the case where an unexpected unregisteredlicensee existed.
As a result of asking those who havereceived the transfer of a patent right, etc. about
actions they took in preparation for the situationin which a non-exclusive license has already been
granted for the patent right, etc., 49.4% answeredthat they confirmed by some sort of searchwhether a non-exclusive license has been granted,
that is, “4. Check on the registry and ask the(ii) Results of the interview survey in Japan
The interview survey in Japan covered (i)reasons for not having registered a non-exclusive
license and (ii) reasons for considering that noproblem will occur even if a non-exclusive license
is unregistered.
As a result of asking interviewees who have
not registered a non-exclusive license obtained(eight enterprises) about their reasons, all ofthem answered that they considered that noparticular problem would occur even if the nonexclusive license was unregistered.
As a result of asking them (eightenterprises) about the reasons of considering so,many of them answered the reasons that are
based on the prospect that even if the patent rightis transferred, the license agreement will betaken over in relation to the transferee or will be
respected. For example, they answered that thelicensor was a responsible partner (six out of the

IIP Bulletin 2010● 3 ●transferor (including due diligence).”Moreover, when asked about the specifics ofsearch, 52.6% answered “3. Confirm by checking
on the registry and asking the transferor(including due diligence),” and 39.5% answered“2. Confirm only by asking the transferor(including due diligence).” Thus, out of those who
conduct some sort of search when receiving thetransfer of a patent right, etc., 92.1% makeconfirmation at least by asking the transferor(including due diligence).

Examining the transfer of the status oflessor in a real property lease agreement, it ispossible to think that the status of lessor istransferred since a lessee will not incur any
disadvantage due to the transfer of the status oflessor in the case where the lessee is entitled toassert the right of lease of the real property
against third parties.
Examining, based on this idea, whether alicense agreement is succeeded in the case where anon-exclusive licensee is entitled to assert the nonexclusive license against third parties, a license
agreement is an agreement which includes various
claim-obligation relations, and when a license
agreement is succeeded, the licensee may incur
disadvantage in some cases while the licensee may
not incur any disadvantage in other cases. Therefore,out of various claim-obligation relations that areincluded in the license agreement, claims andobligations which do not cause disadvantage to thelicensor will be succeeded.
In discussion on the revision of the law ofobligations of the Civil Code, transfer of thecontractual status is now also under discussion. In
examining this point at issue, it is also necessary to
pay attention to the discussion on the transfer of thecontractual status under the Civil Code.

(ii) Results of the interview survey in Japan
The interview survey in Japan covered (i)preliminary search in receiving the transfer of apatent right, (ii) the effects of due diligence, (iii)
influence of the system of automatic perfection on
the practice of due diligence, and (iv) safety oftransactions if a system of automatic perfection is
introduced.
As a result of asking interviewees who havereceived the transfer of a patent right (sevenenterprises) about the method of confirming
whether a non-exclusive license has been granted
for the relevant patent right, all of theinterviewees answered that they exercised some
sort of due diligence.

Ⅲ Monopolistic License(4) Survey
andanalysisfromtheperspectiveofharmonizationofsystems with other countries
We conducted surveys on the requirementsfor perfection of a license (the requirements thata licensee has to fulfill to assert a license against
a transferee, in the case where the patentee
transferred the relevant patent right to a third
party after granting the license) and so on.
There is no requirement for perfection of alicense in the United States and Germany(automatic perfection). In the United Kingdom
and France, registration is required to assert
against a transferee in good faith (system of
perfection against a third party in bad faith). In
SouthKorea,
registrationisrequired(registration-required perfection). For China, thispoint was not clear.

1

Introduction

Based on the awareness of problems, such as
the low rate of use of the exclusive license
system and insufficient protection based onmonopolistic non-exclusive licenses, the FY2008
Study concluded that it was reasonable toestablish a new monopolistic license system as asystem that adapts to the actual practices and isin harmony with the systems of other countries,
after abolishing the exclusive license system.
In establishing the new monopolistic license
system, it is necessary to conduct further survey
and analysis on the matters pointed out
concerning the issues related to the current
monopolistic license system, which served as thepremise of discussion, and the monopolistic
license systems of other countries.

(5) Succession of a license agreement
This section discusses whether a license
agreement itself is succeeded by a third party,
such as a transferee of a patent right, in the casewhere a non-exclusive licensee is entitled toassert the non-exclusive license against third
parties, including a transferee of the relevant
patent right.

2

Outline of the current system

There are two types of “monopolistic
license,” which is granted only to a single
licensee. Specifically, those are “exclusive
license” under the Patent Act (Article 77(1) of the● 4 ●IIP Bulletin 2010

Patent Act), and “monopolistic non-exclusive
license” which is a non-exclusive license under
the Patent Act (Article 78(1) of the Patent Act)but for which the parties to the agreement haveagreed on the exclusivity of the license.
3

agreement);” therefore, it is necessary to sort out
this point.
4

Discussion concerning the review ofthe monopolistic license system(1) Status
of
use
of
the
current
monopolistic license system (exclusive
license and monopolistic non-exclusive
license), by type of business(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered
the status of use of the current exclusive licenseand monopolistic non-exclusive license systems,
and analysis was conducted on the results thereofby type of business.

(1) Matters pointed out concerning issues
related to the monopolistic license
systemActual practices as follows are pointed out as
issues related to the monopolistic license system:(i) In terms of practice, it is difficult to registerexclusive licenses, and also, exclusive licenses
for which registered matters are disclosed to the
public have a negative effect; (ii) A monopolistic
non-exclusive licensee is not entitled to request
an injunction where a third party that is in acompetitive relationship with the non-exclusive
licensee works the relevant patented invention,
nor is it even entitled to request an injunction
against third parties lacking authority.

(2) Low rate of use of the exclusive license
system(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) reasons for obtaining a monopolistic nonexclusive license instead of an exclusive license,(ii) reasons for granting a monopolistic nonexclusive license instead of an exclusive license,(iii) reasons for having difficulty in registering an
exclusive license, (iv) the idea about the pointthat an exclusive license does not become
effective without registration, and (v) the
negative effects of disclosure of information
concerning an exclusive license.
As a result of asking those who have usedthe current monopolistic license system(exclusive license and monopolistic non-exclusive
license) about their thoughts about the point thatan exclusive license does not become effective
without registration, 40.5% answered “1. The
system is hard to use because an exclusive
license does not become effective without
registration.”
As a result of asking those who have usedthe current monopolistic license system(exclusive license and monopolistic non-exclusive
license) about their thoughts about the point that,for an exclusive license, all of the registeredmatters, including the content of the exclusive
license, are disclosed to the public, while for amonopolistic non-exclusive license, the name of
the licensee, the scope of working, etc. are notdisclosed to the public and disclosed only tocertain interested persons even if the license isregistered, 30.1% answered “1. The system is(2) Direction of measures
The
FY2008Study
proposedtheestablishment of a new monopolistic license
system after abolishing the exclusive license
system. The study concluded as follows: It isreasonable that under the new monopolistic
license system, a license becomes effective basedon an agreement, and the licensee of an
unregistered monopolistic license is also entitled
to exercise right against those who work therelevant patent lacking authority, and the licenseeof a registered monopolistic license is entitled toexercise rights against third parties that are in acompetitive relationship against the licensee. In
addition, the study also concluded that it was
reasonable to minimize the registered anddisclosed matters.
In establishing a new monopolistic license
system, it is necessary to conduct further survey
and analysis on the matters pointed out
concerning the issues related to the current
monopolistic license system, which served as thepremise of discussion, and the monopolistic
license systems of other countries. Moreover, theFY2008 Study pointed out “It is necessary toconsider the advisability and possibility of giving astatutory effect that is effective to third parties toan agreement that restricts the exercise of rightby a monopolistic licensee (so-called opposition

IIP Bulletin 2010

Survey, analysis and discussion inestablishing a new monopolistic license
system● 5 ●hard to use because the content of an exclusive
license is disclosed to the public.”

monopolistic non-exclusive license, (ii) thoughts
about the right to request an injunction under the
new monopolistic license system (from thestandpoint of a patentee), and (iii) thoughts about
the right to request an injunction under the newmonopolistic license system (from the standpointof a third party).
As a result of asking interviewees who usethemonopolistic
licensesystem(nine
enterprises) about the points that should be
improved with regard to monopolistic nonexclusive license, two of them answered that it
would be better if monopolistic non-exclusive
licensees have the right to request an injunction,and four of them answered that they saw noparticular problem.

(ii) Results of the interview survey in Japan
The interview survey in Japan covered (i)the points that should be improved with regard to
exclusive license and (ii) thoughts about theregistered and disclosed matters under the newmonopolistic license system.
As a result of asking interviewees who usethemonopolistic
licensesystem(nine
enterprises) about the points that should be
improved with regard to exclusive license, two ofthem cited the point that the registered mattersfor an exclusive license are disclosed to the public,
and four of them answered that they saw noparticular problem.

(4) Survey
andanalysisfromtheperspectiveofharmonizationofsystems with other countries
We conducted a survey about therequirements for asserting the exclusivity of alicense (in the case where a patentee transferreda patent right to a third party after granting amonopolistic license, the requirements that themonopolistic licensee has to fulfill to prohibit atransferee of the patent right to work the patentright by him/herself and to grant a license for thepatent right to another person).
With regard to the requirements for
asserting the exclusivity of a license, there is no
particular requirement in the United States andGermany (automatic perfection). In the United
Kingdom and France, registration is required toassert against a transferee in good faith (systemof perfection against a third party in bad faith). In
SouthKorea,
registrationisrequired(registration-required perfection). For China, thispoint was not clear.

(3) Insufficient protection by monopolistic
non-exclusive license(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) reasons for having received the establishmentof an exclusive license, (ii) reasons for having
established an exclusive license, and (iii)
thoughts about the point that a monopolistic nonexclusive license cannot be asserted against third
parties.
As a result of asking those who have usedthe current monopolistic license system(exclusive license and monopolistic non-exclusive
license) about their thoughts about the point thata monopolistic non-exclusive licensee is notentitled to request an injunction even against
those who work the relevant patent withoutauthority and the point that where a patent rightis transferred, a monopolistic non-exclusive
licensee is not entitled to assert the monopolistic
non-exclusive license against a new patentee,
24.2% answered “2. The system is hard to use
because, in the case where a patent right has
been transferred to a third party, the monopolistic
non-exclusive licensee is not entitled to assert
against a new patentee that he/she is entitled towork the patent in a monopolistic manner,” and20.4% answered “1. The system is hard to use
because a monopolistic non-exclusive licensee is
not entitled to request an injunction even against
those who work the relevant patent right lacking
authority.”(5) Opposition agreement
This section considers the advisability andpossibility of giving an opposition agreement a
statutory effect that is effective to third parties.
First, the effect of an opposition agreementthat is effective to third parties is examined.
In this regard, an opposition agreement
between a licensor and a licensee isfundamentally effective only between them, and it
has no influence on the rights under substantive
law in terms of the relationship between thelicensee and a patent infringer. Therefore, thelicensee is considered to be still able to file an
infringement lawsuit against the patent infringer.
In that case, it is not possible to say that the(ii) Results of the interview survey in Japan
The interview survey in Japan covered (i)the points that should be improved with regard to● 6 ●IIP Bulletin 2010

opposition agreement is effective to third parties.
Then, in order to say that an opposition
agreement is effective to third parties, it isnecessary to ensure by an opposition agreement
between a licensor and a licensee that no rights
under substantive law will arise in terms of therelationship between the licensee and a patent
infringer.
Next, the following compares advantages anddisadvantages from the standpoint of licensor,
licensee and patent infringer, respectively, in thecase where an opposition agreement isrecognized as effective to third parties.
In this regard, one of the advantages forlicensor is the point that if an opposition
agreement is recognized as effective to third
parties, a licensor can avoid the risk that therelevant patent is determined to be invalid in an
infringement lawsuit, which is against thelicensor’s intention, by making an opposition
agreement with the licensee in the license
agreement. On the other hand, one of thedisadvantages for licensee is the point that if an
opposition agreement is recognized as effective tothird parties, the licensee will not be able to filean infringement lawsuit under substantive law
and thus will not be able to eliminate
infringement on his/her own if he/she makes an
opposition agreement with the licensor.
Recognizing an opposition agreement as
effective to third parties has possible advantages
and disadvantages from the standpoint of licensor,
licensee and patent infringer, respectively.
Therefore it is necessary to examine whether torecognize an opposition agreement as effective tothird parties, in light of which advantages anddisadvantages should be counted more.

security interest, etc. on the right to obtain apatent in other countries.
2

Pledge, security by transfer and security byprovisional registration are cited as security
interests which may be established on intellectual
property. Differently from the patent right, for theright to obtain a patent, the current systemprohibits establishing a pledge thereon, nor isthere a provisional registration system.
In addition, there is no means of registeringand publicly notifying change in the right to obtaina patent after filing.
3(2) Matters pointed out regarding the nonexistence of a system to register theright to obtain a patent
The following inconveniences caused by the
non-existence of a system to register and publicly
notify the right to obtain a patent after filing arepointed out: (i) It is not easy to surely confirm theconditions of a right, including the propriety ofperfection; (ii) As there is no means of asserting
restriction on disposition (attachment) against
third parties, if the right to obtain a patent isdisposed of contrary to an attachment order, theattaching creditor may be harmed.

Introduction(3) Direction of measures
Consequently, the FY2008 Study proposed to
end prohibition on the establishment of a pledge
on the right to obtain a patent after filing, andproposed the establishment of a registration andpublic notice system at the same time.
In permitting the establishment of a pledge andestablishing a registration and public notice system,
it is essential to conduct further survey and analysis
on the needs in terms of practice and the systems ofother countries. In addition, new burdens, such as
registration license tax, may occur if a registrationand public notice system is established for the right

The FY2008 Study concluded that it was
reasonable to permit the establishment of apledge on the right to obtain a patent, based on
the awareness of the problem that there isincreasing need for early exploitation from thestage of filing a patent application.
In permitting the establishment of a pledge
and establishing the registration and public noticesystem, it is necessary to conduct further survey
and analysis on the needs in terms of practice,which served as the premise of discussion, and

IIP Bulletin 2010

Discussion on early exploitation of theright to obtain a patent(1) Matters pointed out regarding theprohibition of establishment of a pledge
on the right to obtain a patent
There is no other way but to rely on security
by transfer in order to offer the right to obtain apatent as security, because it is prohibited toestablish a pledge on the right to obtain a patent.

Ⅴ Early Exploitation of the Right
to Obtain a Patent
1

Outline of the current system● 7 ●patent.
In addition, we conducted a survey on theeffect of registration (whether registration is arequirement for asserting against third parties) ofchange in the right to obtain a patent, such astransfer, in countries that have a registration
system concerning change in the right to obtain apatent.
Regarding transfer, registration is therequirement for asserting against third parties in
the United States, the United Kingdom andFrance, while registration is not the requirement
for asserting against third parties in Germany.

to obtain a patent. Therefore, in this research andstudy, we consider whether it is possible toestablish a requirement for asserting restriction on
disposition of the right to obtain a patent against
third parties, in the case where the establishment ofa registration and public notice system is notassumed.
4

Survey, analysis and discussion on
early exploitation of the right to obtaina patent(1) Prohibition of establishment of apledge on the right to obtain a patent(i) Results of the questionnaire survey inJapan
The questionnaire survey in Japan covered(i) the existence of a security interest established
on a patent right, (ii) the existence of a pledge
established on a patent right, (ii) the existence ofa security interest established on the right toobtain a patent after filing, (iv) whether theywould want to use a pledge established on theright to obtain a patent after filing, and so on.
As a result of asking all respondents whether
they would want to use a pledge that isestablished on a right for which an application ispending, even taking into account efforts andcosts for registration that are expected to arise
along with the establishment, if it is permitted toestablish a pledge on a right for which an
application is pending, 0.7% answered “1.
Definitely want to use,” and 19.1% answered “2.
Want to use if the occasion arises.” Those whowant to use accounted for 19.8% in total.
In addition, according to counting byconsidering small and medium sized enterprises
as the population (32 enterprises), 3.1% answered“1. Definitely want to use,” and 46.9% answered“2. Want to use if the occasion arises.” Those
who want to use accounted for 50.0% in total.

(3) Requirement for asserting restriction
on disposition of the right to obtain apatent against third parties
This section considers whether it is possible
to establish a requirement for asserting
restriction on disposition of the right to obtain apatent against third parties, even where aregistration and public notice system for the rightto obtain a patent is not assumed.
First, considering requirement for asserting
restriction on disposition of real property andgeneral nominative claim against third parties, forreal property, the requirement for asserting
restriction on disposition against third parties is
the same registration as the requirement for
asserting transfer of real property against third
parties (Article 177 of the Civil Code). For
general nominative claim, court precedent
indicates that relative merits between thetransfer of a claim and an attachment order should
be determined in the same manner as in the caseof double transfer of a claim. In addition,
regarding restriction on disposition of real
property, a court clerk has the obligation tocommission registration (Article 48(1) of the Civil
Execution Act). For restriction on disposition ofgeneral nominative claim, an execution court has
the obligation to serve an attachment order to athird party obligor (Article 145(3) of said Act).
Therefore, for both real property and general
nominative claim, there are arrangements toensure that the requirement for asserting
restriction on disposition against third parties isfulfilled without fail in the course of civil
execution procedures.
Examining the requirement for asserting
restriction on disposition of the right to obtain apatent against third parties in light of the above,
under the Patent Act, a “notification” to the JPO
is the requirement for the transfer of the right toobtain a patent to become effective (Article 34(4)(2) Survey
andanalysisfromtheperspectiveofharmonizationofsystems of other countries
We conducted a survey on whether there is a
registration system concerning change in theright to obtain a patent.
The United States, Germany, the United
Kingdom and France have a registration system
concerning change in the right to obtain a patent.
China and South Korea do not have a registration
system concerning change in the right to obtain a● 8 ●IIP Bulletin 2010

of the Patent Act). Therefore it is also possible tothink that the requirement for asserting
restriction on disposition of the right to obtain apatent against third parties is equivalent to a“notification” to the JPO. In that case, thepossible requirement for asserting restriction on
disposition of the right to obtain a patent against
third parties is that (a) an attaching creditor gives
a “notification” of restriction on disposition to the
JPO, or that (b) the court gives a “notification” (ora notice or service equivalent thereto) ofrestriction on disposition to the JPO.
However, when employing the idea as above,it is necessary to pay attention to (a) whether it ispossible to organize things in the manner that therequirement for asserting against third parties isfulfilled not by the obligatory act of the court butby the act of an attaching creditor him/herself,
and to (b) whether it is possible to establish a
new type of procedure, “notification” (or notice orservice as that equivalent to “notification”) by the
court, because such a procedure may become
necessary.
(Researcher: Yasuyuki IKAWA)

IIP Bulletin 2010

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