Patent Act Article 65: Right to Demand Compensation
1. Overview
Right to demand compensation refers to the right to demand payment of compensation equivalent to a licensing fee under certain conditions from a person who has worked the invention related to a patent application as a business after the publication of the application. Since the content of the application is made public through the publication of the application, this right is granted to compensate for the applicant's losses resulting from others working the invention.
(Preparation for essay exams)
Please be sure to remember the keyword "compensate". Note that it is not "make up for" (ho-ten)!!!
(Preparation for essay exams)
If an unauthorized user has not worked all the invention-specific matters of the invention related to the application, the right cannot be exercised even after the patent right is established, due to the principle of unity of rights. Therefore, through an amendment (Article 17-2), the content worked by the unauthorized user is amended to fall within the technical scope (Article 70).
・Requirements for the occurrence of the right to demand compensation
(1) The application has been published (Article 65(1))
(2) The other party has been identified and warned by presenting a document stating the content of the invention related to the application (Article 65(1))
(3) A third party has worked the invention as a business after the warning and before the registration of the establishment of the patent right (Article 65(1))
(4) If the other party is working the invention knowing that it is the invention related to the application, a warning is not a requirement, but
since it is not easy to prove that they are working it with knowledge, it is desirable to issue a warning.
・Warning letter
It is necessary that the invention related to the published application be clearly stated. If it is unclear, it does not have the significance of a substantial warning, and the right to demand compensation does not arise (Article 65(1))
・In the case of a patent right related to co-ownership
If one of the co-owners issues a warning, the requirements for occurrence are met. This is because it is a notification of intent to inform the unauthorized user of the fact of publication.
・Is a second warning necessary if the scope of claims is amended after a prescribed warning? (Supreme Court, July 19, 1988)
If an article worked by a third party did not fall within the technical scope before the amendment but came to fall within the technical scope after the amendment, it is interpreted that it is necessary to issue a warning, etc., to the third party again. However, if the amendment narrows the scope of claims and the invention falls within the technical scope both before and after the amendment, it is interpreted that a second warning is not required. This is because, in light of the legislative intent of the article, which requires a warning or bad faith to prevent giving the third party a sudden "surprise" demand for compensation, it is sufficient to require a warning or bad faith only in the former case.
2. When damages and the perpetrator are known "after" the registration of the establishment of a patent, etc.
General laws in Japan are the Civil Code, etc., and special laws such as the Patent Act and Trademark Act are established to cover areas where the Civil Code, etc., cannot be operated effectively.
For this reason (although it is easy to ignore when preparing for the patent attorney exam), the principle is the Civil Code, and the exceptions are the Patent Act and Trademark Act.
Now, in Article 13-2(5) of the Trademark Act and Article 65(6) of the Patent Act, it is stated that "the time when the victim or their legal representative knows of the damages and the perpetrator" in Article 724 of the Civil Code shall be read as "the date of registration of the establishment of the patent right". This is a specific provision for an exception.
In other words, the provisions regarding the extinctive prescription of the right to claim damages due to tort (Article 724 of the Civil Code) are as follows:
(1) Principle: If not exercised within three years from the time the victim or their legal representative knows of the damages and the perpetrator, it is extinguished by prescription (Article 724(1) of the Civil Code)
(2) Exception: If the victim or their legal representative knows of the damages and the perpetrator "before" the registration of the establishment of a trademark right, etc., it is extinguished by prescription if not exercised within three years from the date of registration of the establishment of the trademark right, etc. (Article 13-2(5) of the Trademark Act, Article 65(6) of the Patent Act)
This is the result.
Therefore, if you know "after" the registration of the establishment of a patent right, etc., the Civil Code Article 724 is applied as a principle.
・Patent Act Article 65
(Effects of publication of application, etc.) Article 65 (1) When a patent applicant has given a warning by presenting a document stating the content of the invention related to the patent application after the publication of the application, they may demand payment of compensation in an amount equivalent to the amount they would be entitled to receive for the working of the invention if the invention were a patented invention, from a person who has worked the invention as a business after the warning and before the registration of the establishment of the patent right. The same shall apply to a person who has worked the invention as a business before the registration of the establishment of the patent right, knowing that it is an invention related to a patent application for which the application has been published, even if the warning is not given. (2) The right to demand under the preceding paragraph may not be exercised until after the registration of the establishment of the patent right. (3) A patent applicant may not demand payment of compensation as prescribed in paragraph (1) in cases where the provisional exclusive licensee or provisional non-exclusive licensee has worked the invention related to the patent application within the scope stipulated by the establishment act. (4) The exercise of the right to demand under paragraph (1) does not preclude the exercise of the patent right. (5) Except in cases where the patent application is abandoned, withdrawn, or dismissed after the publication of the application, where a decision or trial decision to the effect that the patent application should be refused has become final and binding, where the patent right is deemed never to have existed pursuant to the provisions of Article 112(6) (excluding cases where the patent right is deemed to have existed from the beginning pursuant to the provisions of Article 112-2(2)), where a rescission decision under Article 114(2) has become final and binding, or in the case of the proviso to Article 125, the right to demand under paragraph (1) is deemed never to have arisen. (6) The provisions of Article 101, Articles 104 through 104-3, Article 105, Article 105-2, Articles 105-4 through 105-7, and Article 168(3) through (6), as well as the provisions of Article 719 and Article 724 (Tort) of the Civil Code (Act No. 89 of 1896) shall apply mutatis mutandis to the exercise of the right to demand under paragraph (1). In this case, if the person holding the right to demand knows of the fact of the working of the invention related to the patent application and the person who worked it before the registration of the establishment of the patent right, the phrase "the time when the victim or their legal representative knows of the damages and the perpetrator" in item (i) of the same Article shall be read as "the date of registration of the establishment of the patent right".
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