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"Guide to Licensing Negotiations Involving Standard Essential Patents"

The spread of the Internet of Things (IoT) is causing major changes in licensing negotiations involving Standard Essential Patents (SEPs). In such a technological areas as telecommunications, the shorter product life cycles and the growing number of patents have made it much more difficult for companies to assess all the relevant SEPs to their products before commercialization.

Various aspects of the licensing negotiations are also changing. SEP licensing negotiations in the Information and Communication Technology (“ICT”) field, which traditionally took place chiefly among ICT companies, now often take place between ICT companies and companies in other industries, and it is becoming harder to resolve disputes through cross-licensing. In addition, divergent perspectives on licensing rates are fostering unease over SEP-related negotiations and disputes.

The Japan Patent Office (JPO) therefore created "Guide to Licensing Negotiations Involving Standard Essential Patents." The Guide aims to enhance transparency and predictability, facilitate negotiations between rights holders and implementers (patent users), and help prevent or quickly resolve disputes concerning the SEPs”.

With the environment surrounding SEP licensing negotiations continuing to transform, JPO plans to review and revise this Guide as appropriate in an open and transparent process so that it continues to evolve and remains “living.”

"Guide to Licensing Negotiations Involving Standard Essential Patents"(PDF: 520KB)

“Hantei”(Advisory Opinion) for Essentiality Check

The recent spread of Internet of Things (IoT) has changed scenes of licensing negotiations so that the negotiations are now conducted by companies of different industries. Participation of the companies from different industries has made it difficult to solve problems by such conventional method as a cross-licensing within the same industry. Also, opinions are increasingly divided as to essentiality of patent and reasonable license fees in the negotiations.

Especially, if there is a dispute between the parties over a determination as to whether the patented invention subject to licensing negotiation is a SEP, it would be difficult to resolve the dispute by themselves.

Therefore, if such determination is made by the JPO from a fair, neutral perspective, it would greatly contribute to facilitating the licensing negotiation and dispute resolution between those parties.

In response, the JPO clarified how the “Hantei” (Advisory Opinion) system shall be operated for essentiality check, thereby prepared the ‘Manual of “Hantei” (Advisory Opinion) for Essentiality Check’ for practitioners and publicized in March 28, 2018. The operation commenced from April 1, 2018.

And JPO revised the ‘Manual of “Hantei” (Advisory Opinion) for Essentiality Check’ in June 2019.The new operation commenced from July 1, 2019.

Revision of the ‘Manual of “Hantei” (Advisory Opinion) for Essentiality Check’(provisional translation (English)) (PDF:1,632KB)