Intellectual Property

January 19, 2022

Is it possible to grant an exclusive license to another party but also keep the rights to use the patent yourself?

Exclusive licenses for intellectual property are exclusive to everyone by the licensee.  That includes the patent owner and therefore, patent owners who choose to enter into an exclusive license agreement give up their own right to use the patent for the extent of the license. However, a recent trend in intellectual property licensing has been to grant a license to a 3rd party while promising not to grant any further licenses to other 3rd parties.  Therefore, this type of license agreement has two main benefits.  First, it acts as an exclusive license in terms of further licensing to 3rd parties, […]
November 16, 2018

Is it necessary to file a request for an examination in addition to a patent application in Japan?

In Japan, the a patent application merely starts the process of obtaining a patent for your invention and inventors should be aware that there are additional steps to the process after the application is filed.  Specifically, one of the most important steps following the application is filing a request for examination of the patent. The Japan Patent Office will not examine a patent without being requested to do so and if the applicant does not submit a request within 3 years of filing his or her application the application will be considered withdrawn and no patent will be granted. For […]
August 2, 2018

Are there any limits on what can be contracted to in Japan?

Parties in Japan are free to contract regarding almost anything but contracts that are against public policy are considered void.  This makes sense and most people would agree that the concerns of public health and safety outweigh the parties’ right to enforce a contract for the sale of illegal drugs.  However, there is no specific line to determine which contracts will be considered as “against public policy,” and contracts that might infringe on public policy are dealt with on a case-by-case basis. Sometimes these public policy goals may not be as obvious as the above example where the contract in […]
January 17, 2018

Is it necessary to file a request for an examination in addition to a patent application in Japan?

In Japan, the a patent application merely starts the process of obtaining a patent and one of the most important steps following the application is filing a request for examination of the patent.  The Japan Patent Office will not examine a patent without being requested to do so and if the applicant does not submit a request within 3 years of filing his or her application the application will be considered withdrawn and no patent will be granted.