The Japan Patent Office (JPO) has now published its initial edition of the Guide to Licensing Negotiations Involving Standard Essential Patents (issue date: June 5, 2018). This is a guide meant to help international and Japanese parties to arrange for equitable licensing of key technologies covered by Standard Essential Patents (SEPs; more on these below). The publication comes in the wake of its deliberations, consultations, and public comment periods since last year.
The Guide emphasizes: "This Guide is not intended to be prescriptive, is in no way legally binding, and does not forejudge future judicial rulings. It is intended to summarize issues concerning licensing negotiations ..." In other words, the Guide will not legally dictate how companies should negotiate, but aims to help negotiating parties. The Postscript concludes that the Guide is expected to change through further discussion and developments.
The current edition mainly describes its findings under the rubrics of the negotiating process–good faith negotiating and efficiency–in chapter 2, and then then the negotiation's product–a good working licensing agreement–in chapter 3.
Standard Essential Patents (SEPs), described by the Guide, are "patents essential in implementing standards in the field of wireless communications and the like," namely essential to making "smart" devices and appliances. These cases are complicated because an industry totally foreign (until recently) with artificial intelligence (AI) may now be incorporating such technology into products without awareness of the market value that it holds for the wireless communications developer of that technology. This cross-disciplinary, cross-sector conflict of interest stimulated the JPO's interest in helping illumine a pathway for businesses on either side to make good headway toward fair licensing agreements in Japan.
The Guide is, as admitted, far from polished. Yet we hope that through consulting and then engaging with the JPO concerning it, all interested parties can help it become a guide Japanese and foreign parties for amicable and fair negotiations in the complex meeting of innovation, investment, and conflicting interests.
Sources
Japan Patent Office. Announcement of SEP Guide publication. Updated June 5, 2018.
Japan Patent Office. English version of Guide to Licensing Negotiations Involving Standard Essential Patents, June 5, 2018.
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