Patent Act Article 73: Jointly Owned Patent Rights☆
This article is a revised version. Links to past articles are provided at the bottom.
1. Joint Ownership of Patent Rights
Jointly owned patent rights refer to patent rights held jointly by two or more persons, but if one joint owner acts against the will of the others, it may result in a disadvantage to the other joint owners. The provisions of Article 73 are established to regulate such disadvantageous acts.
・Assignment of share, establishment of pledge (Article 73, Paragraph 1)
Consent of other joint owners is required. This is because the value of the other joint owners' shares may fluctuate depending on the capital and technical capabilities of the licensee, etc. However, consent is not required for general succession. The same applies when the right to obtain a patent (Article 29, Paragraph 1, preamble) is jointly owned.
・Unless otherwise agreed, the patented invention can be freely worked (Article 73, Paragraph 2)
This paragraph was not established to lift a prohibition that was otherwise prohibited by the Civil Code as a special provision; rather, while each joint owner can work the patented invention without the consent of others under the Civil Code, this provision was established just in case, as there is a risk that an interpretation contrary to this might be made due to being influenced by the provisions of Paragraph 1.
・Establishment of license (Article 73, Paragraph 3)
Consent of other joint owners is required. Depending on the capital and technical capabilities of the licensee, etc., the rights of other joint owners may become nominal. For this reason, it is interpreted that the establishment of a license without consent is invalid. If it were merely considered an infringement of the right to consent, the disadvantage to other joint owners would be excessive. Note that a claim for damages (Civil Code Article 709) for infringement of the right to consent can be made against the joint owner who established the license without permission.
・Trial for correction (Article 126), correction of specification, etc. (Article 134-2, Paragraph 1)
Must be done by all joint owners (Article 132, Paragraph 2). This is because changes in the scope of rights can be disadvantageous to other joint owners.
・Filing an infringement lawsuit
(1) Right to demand an injunction (Article 100)
It is interpreted that it can be exercised independently based on one's own share right.
Res judicata does not extend to other joint owners, and even if the case is lost, other joint owners can independently exercise the right to demand an injunction.
If considered a preservation act, it would be harsh for other joint owners because the res judicata in the event of a loss would extend to them.
(2) Right to claim damages (Civil Code Article 709)
It is interpreted that it can be exercised independently based on one's own share right.
This is because the right to claim damages is a monetary claim and is a divisible claim.
Res judicata does not extend to other joint owners, and even if the case is lost, other joint owners can independently exercise the right to claim damages.
Statute of limitations: 3 years
・There is a view that allows independent filing on the grounds that it is an indivisible claim (Civil Code Article 428), but there are problems such as the burden of risk if the joint owner making the claim is insolvent, and the complexity of subsequent reimbursement relationships.
(3) Right to demand return of unjust enrichment (Civil Code Articles 703, 704), measures to restore credibility (Article 106)
It is interpreted that it can be exercised independently. Same reason as the right to claim damages.
Statute of limitations: 10 years
(4) When another joint owner works the invention without consent in cases where there is a special agreement (special provision)
In cases where there is a special agreement, only damages for non-performance of an obligation (Civil Code Article 415) are recognized for working without the consent of the joint owners.
It is interpreted that damages based on Civil Code Article 709 are recognized only when such a special agreement is recorded in the patent register, based on the principle of public notice of real rights.
・Articles related to joint ownership
Article 14: Mutual representation of multiple parties
Article 67-2, Paragraph 4: Registration of extension of duration
Article 73: Jointly owned patent rights
Article 77, Paragraph 5: Exclusive license
Article 94, Paragraph 6: Transfer, etc. of non-exclusive license
Article 107, Paragraph 3: Patent fees
Article 132: Joint trial
Article 134-2, Paragraph 9: Request for correction in a trial for patent invalidation
2. What happens to a non-exclusive license granted by a patent joint owner if the patent joint owner waives their share?
A joint owner of a jointly owned patent right can grant a non-exclusive license for that patent right to another person if they obtain the consent of the other joint owners (Patent Act Article 73, Paragraph 3). The question is what happens to this non-exclusive license if the joint owner who granted it waives their share.
Specifically, the question is: (1) Patent A is jointly owned by A and B, (2) A grants a non-exclusive license to C with B's consent (Patent Act Article 73, Paragraph 3), and then (3) A waives their share of Patent A; can C assert that they hold a non-exclusive license against B?
In conclusion, they should be able to assert it.
This is because what A granted to C was a non-exclusive license for the entirety of Patent A. Also, due to A's waiver of their share, A's share belongs to B (Civil Code Article 255). Therefore, C can assert that they hold a non-exclusive license against B.
If C's non-exclusive license were only for A's share, and A's share were to be extinguished due to A's waiver of their share, one could think that C's non-exclusive license would also be extinguished along with the extinction of that share. However, because A's share belongs to B due to A's waiver of their share (Civil Code Article 255), such a thing does not happen.
Note that when waiving a share of a patent right, it seems necessary to submit a "Certificate of Patent Waiver" and an "Application for Registration of Transfer of Share due to Waiver of Share." If the patent right is not registered (at the application stage), a "Document of Waiver of Share" and a "Notification of Change of Applicant Name" are submitted.
・Patent Act Article 73: Jointly owned patent rights
(Jointly owned patent rights)
Article 73: When a patent right is jointly owned, each joint owner may not assign their share or establish a pledge on their share without the consent of the other joint owners.
2: When a patent right is jointly owned, each joint owner may work the patented invention without the consent of the other joint owners, unless otherwise agreed by contract.
3: When a patent right is jointly owned, each joint owner may not establish an exclusive license or grant a non-exclusive license to others for that patent right without the consent of the other joint owners.
・Civil Code Article 255
(Waiver of share and death of a joint owner)
Article 255: When one of the joint owners waives their share, or dies without an heir, that share belongs to the other joint owners.
●Past Articles
・Patent Act Article 73: Patent Rights Related to Joint Ownership
・Patent Act Article 73: What happens to a non-exclusive license granted by a joint patent owner if the joint patent owner abandons their share?
・Patent Act Article 73: Abandonment of Jointly Owned Patent Rights (Abandonment by one of the joint owners)
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