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JPO’s SEP advisory opinion service updated

Negotiation on SEP


JPO’s SEP advisory opinion service has been updated for cases received on or after July 1 2019. This service started from April 2018, to provide a JPO’s non-binding opinion on whether a particular patent is a standard essential patent (SEP). We covered this service in the previous article here.

The changes in the user’s guide include the following.

  • User can demand an opinion that a particular patent is NOT a standard essential patent.
  • User can use this service not only for licensing negotiations, but also for the negotiations in patent trade, business transfer involving patent transfer, and creation of security interest in patents.
  • It explicitly describes that, even when JPO provides a positive opinion, it does not necessarily mean that a particular product perceived to be in conformity with the standard is covered by the patent.

Some patent holders may allege patent infringement by just proving the patent to be an SEP. I’m not sure how a court decides, but patent holders may be required further proof.

By the way, I could not find any decisions on the SEP opinion service in the JPO’s database. If not used, it was introduced for nothing. Now, I’m also curious about the utilization situation of IACT (International Arbitration Center in Tokyo), which was established in September 2018. For IACT, we covered in the previous article here, if you’re interested.

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