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Japan to ensure a chance of correction for licensed patents

Correction of Patent

The Japanese government has begun consideration of amendment of the patent correction system. The patent correction system allows patent owners to correct patent claims, specification or drawings within certain limits, as a defense against the assertion of invalidity. 

Under the current law, where there is a licensee, the patent owner cannot make corrections without the consent of the licensee. So, if you have standard essential patents (SEPs) licensed to many companies, you have to obtain the consent of all the licensees to make corrections. Also, if you sign a comprehensive cross-license agreement without specifying the patents, you will be required to obtain the consent of the other party for all the patents covered in the agreement. It would be practically difficult to obtain the consent from all the licensees. As a result, if someone files an invalidation trial, you may be not able to make corrections and lose your patent.

Considering such problem, the government is suggesting to amend the patent law, so that it does not require to obtain the consent from a non-exclusive licensee.

A solution in the current situation is to obtain prior consent from the licensee in the license agreement. However, your agreement may not care such issue. Because such limitation is not set in all the counties, e.g. the US, Germany, China. You might want to review your license agreement. 

Reference: Document distributed in the patent system subcommittee on May 13, 2020 (Japanese)

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