Patent Act Article 83: Award for Non-Working
The Patent Act aims to contribute to the development of industry through the protection and utilization of inventions (Article 1). Therefore, if an invention is not utilized (worked, etc.), the purpose of the Patent Act cannot be achieved. As a countermeasure in this case, the provisions of Article 83 are established.
・Even if there has been non-working for 3 years or more in the past, if it is currently being worked, it is excluded.
・Justifiable grounds
Cases where funds, raw materials, equipment, etc., necessary for working the patented invention cannot be prepared due to unavoidable circumstances, etc.
・Establishment and Grant
Only a non-exclusive license by an award is "established." In contrast, non-exclusive licenses and provisional non-exclusive licenses are "granted."
(Preparation for Thesis Examination)
I believe that basic textbooks interpret "not being worked appropriately" by describing two cases: (i) cases where only nominal working is performed and working sufficient to meet domestic demand is not performed (quantitative inadequacy) and (ii) cases where only the import of goods related to the patented invention is performed and domestic production is not performed (qualitative inadequacy). I think it is fine to write about quantitative inadequacy in a thesis examination, but qualitative inadequacy has the potential to violate Article 27 of the TRIPS Agreement. If you write about qualitative inadequacy in a thesis examination, please check the provisions of Article 27 of the TRIPS Agreement before writing.
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Added on 12/20/20
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・Regarding the subject of working of a patented invention under Article 83 of the Patent Act
The general purpose of laws, including the Patent Act, is to make the world a better place by having everyone follow the rules called laws (in the case of the Patent Act, making the world a better place through industrial development).
Article 83 of the Patent Act does not explicitly state the subject of working of a patented invention. For this reason, a question may arise as to who the subject of working is. However, in the Patent Act, which is premised on having rules followed, it does not seem appropriate to interpret the subject of working under Article 83 of the Patent Act to include patent infringers (rule breakers). Therefore, the subject of working under Article 83 of the Patent Act is considered to be the patentee, exclusive licensee, or non-exclusive licensee.
This non-exclusive licensee should include not only non-exclusive licensees by grant but also non-exclusive licensees under Article 35(1) of the Patent Act (considering the purpose of its establishment). For this reason, I believe that statutory non-exclusive licensees are also included in the subject of working under Article 83 of the Patent Act.
・Patent Act Article 83
(Award for the establishment of a non-exclusive license in the case of non-working)
Article 83: Where a patented invention has not been worked appropriately in Japan continuously for three years or more, a person who intends to work the patented invention may request the patentee or exclusive licensee to hold consultations on the grant of a non-exclusive license. Provided, however, that this shall not apply if four years have not passed since the date of the patent application for the patented invention.
(2) Where the consultations referred to in the preceding paragraph do not result in an agreement or where consultations cannot be held, the person who intends to work the patented invention may request an award from the Commissioner of the Japan Patent Office.
・TRIPS Agreement Article 27
Article 27: Patentable Subject Matter
(1) Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application (Note). Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
(Note)
For the purposes of this Article, Members may deem the terms "inventive step" and "capable of industrial application" to be synonymous with the terms "non-obvious" and "useful" respectively.
(2) Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
(3) Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph (b) shall be reviewed four years after the date of entry into force of the WTO Agreement.