On April 1, 2018, the Japan Patent Office ("JPO") began operation of an advisory opinion (hantei) system to judge whether a patent is a standard-essential patent ("Operation"). The advisory opinion system is an existing system under which, pursuant to Article 71 of the Patent Act, the JPO will issue an official opinion on whether certain products or methods infringe particular patents in response to a petition made by an interested party. This opinion, however, is not legally binding.
Recently, the spread of new services via the internet and the development of new technologies such as the internet of things and autonomous driving have increased the need for various types of businesses, including product manufacturers and service providers, to utilize standards (especially telecommunications standards).
When a business owner negotiates a patent license, whether the patent is a standard-essential patent greatly influences the license negotiations and the royalty rate. However, it is not always easy for the parties to agree on whether a patent is a standard-essential patent or how to resolve disputes.
With these circumstances in mind, the Operation aims to facilitate license negotiations by providing a fair and neutral opinion from the JPO regarding whether the patent is a standard-essential patent using the existing advisory opinion system. Through active use of the Operation, companies developing new technologies and services should be able to execute projects promptly by quickly and inexpensively obtaining a determination as to whether a patent is a standard-essential patent.
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