On December 28, 2021, the Nikkei Shimbun reported that a request for a ruling to grant a non-exclusive license (so-called compulsory license) had been filed and deliberations had begun.
It is public that the deliberations have started at the advisory council of METI, but the deliberations themselves are closed to the public. This is an interesting case because since I started my career in intellectual property, there has never been a request to invoke a so-called compulsory license in Japan, and there are many aspects of how the case will be deliberated that are not clear from the law alone.
iPS特許、第三者利用の可否裁定へ 元理研研究者ら請求: 日本経済新聞
- Details of past reports, etc.
- Details of the case
- What is requests for a "compulsory" license based on public interest under Article 93 means?
- Progress in this time
Details of past reports, etc.
According to past news reports as below, a request for granting a non-exclusive "compulsory" license for the public interest under Article 93 of the Patent Law was filed against the Minister of Economy, Trade and Industry (METI) by Vision Care Inc. and VC Cell Therapy Inc. regarding Japatent Patent No. 6518878 (Name of Invention: "「網膜色素上皮細胞の製造方法」").
裁定請求に関する当社の対応につきまして | 株式会社ヘリオス
Details of the case
According to the Patent Office Gazette 特許庁公報（公示号）（号数3 (2021)-008）, the request for the license was made on July 13, 2021, and the request number is "2021-1". The METI will consider whether the complusory license should be granted or not down the road.
What is requests for a "compulsory" license based on public interest under Article 93 means?
According to the following information, "An arbitration system is a system that allows a third party to establish a right (compulsory license) to work another person's patented invention, etc., without the consent of the patentee, etc., or against the will of the patentee, etc., by an arbitration by the Commissioner of the Patent Office or the Minister of Economy, Trade and Industry when certain requirements are met." In Japan, requests for compulsory licenses are allowed on the grounds of (1) non-practice of patent rights, (2) cross-licensing, and (3) public interest. Request for compulsory licenses on the grounds of public interest is last resort on these matters in a sense.
In addition, the procedures to grant the compulsory license are stipulated in the law and the following operational guidelines. However, since there are few actual cases, it is difficult to know how the system will proceed. Therefore, it is personally interesting to see how it will proceed.
第7回特許戦略計画関連問題ワーキンググループ議事次第・配付資料 | 経済産業省 特許庁
Progress in this time
When a request for compulsory license is made, the patentee, etc. is given an opportunity to submit a written argument. After that, the METI is legally required to hear the opinions of the Industrial Property Council. This time, the first meeting of the Industrial Property Council's Invention Licensing Subcommittee was held on December 2, 2021.
The minutes and abstracts of the meeting will not be made public, but there is information that it was decided to continue the discussion after the second meeting.
It's not often that we get a chance to see the progress of such request, so I will continue to pay attention to it.