JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Alternative dispute resolution (ADR) is not com- monly used to settle intellectual property cases in Japan. However, ADR, such as mediation or arbitration, is available, and JIPAC and IACT (see 2.4 Specialised Bodies/Organisations for the Resolution of Disputes ) are the ADR organisa- tions that provide dispute resolution in the field of intellectual property. Moreover, the Tokyo District Court and the Osa- ka District Court introduced mediation proce- dures for intellectual property rights matters on 1 October 2019. This procedure is designed to resolve disputes regarding intellectual property rights matters in a speedy and efficient manner by using a mediation committee made up of a judge from the special division for intellectual property matters and experts such as lawyers or patent attorneys who orally express their opinions. In principle, the procedure should be concluded within around three hearing dates. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights Patent rights may be freely assigned. However, no assignment will take effect without having been registered on the patent registry, except in cases of general succession, such as inheritance or merger. Where a patent right is jointly owned, no joint owner may assign their share without the consent of all the other joint owners. Neither an agreement in writing nor approval from the JPO is necessary for conducting an assignment.
10.2 Procedure for Assigning an Intellectual Property Right
Assignment of a patent right comes into effect when it is registered on the patent registry. In the case of a general succession, such as through inheritance or merger, the assignment takes effect without being registered, but the regis- tration is made by providing notification of that assignment. 10.3 Requirements or Restrictions to License an Intellectual Property Right In terms of licensing patent rights, licences are granted merely by an agreement between the parties (non-registered licences) and licences granted upon registration at the JPO (registered as exclusive licences), in addition to an agree- ment between the parties. As for the former type of licence, there are no particular restrictions regarding formalities, such as the existence of a written agreement or notification to the JPO, etc. However, the latter type of licence requires registration at the JPO in order for it to enter into force. It should be noted that if a registered exclusive licence is granted, other parties may not execute the scope of rights subject to that As the grant of a registered exclusive licence requires registration at the JPO in order for it to come into force, it is necessary to make an appli- cation to the JPO setting forth the content of the licence agreed by both parties and to receive registration thereof. The granting of a non-reg- istered licence comes into force merely by way of the execution of an agreement between the parties. Thus, generally, a licence of this kind is granted by preparing a licence agreement, as well as orally or even implicitly. grant (even the patent right-holder). 10.4 Procedure for Licensing an Intellectual Property Right
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