Patent, Japan: Revisions to Enforcement Regulations and Operational Guidelines Relating to Arbitration Requests

On May 30, 2025, revisions to the “Ministerial Ordinance Partially Revising the Patent Act Enforcement Regulations (Ordinance of the Ministry of Economy, Trade and Industry No. 48 of 2025)” (hereinafter referred to as the “Revised Patent Act Enforcement Regulations”) and the Operational Guidelines for the Arbitration System came into force. This article provides an overview of these revisions.

Revised Patent Act Enforcement Regulations

Persons who request an arbitration decision under the provisions of the Patent Act, the Utility Model Act, or the Design Act are required to submit a request for arbitration decision using the prescribed form set forth in the Patent Act Enforcement Regulations.

The form includes a section for describing the course of negotiations leading up to the request for arbitration, as shown below.

Excerpt from the PDF of Form 58 in Source 2

In the notes section of the form for describing the course of negotiations, the following two items have been newly added as specific matters to be included regarding the course of negotiations:

(1) Progress and Results of Alternative Dispute Resolution Procedures

When a party seeking the grant of a non-exclusive license is unable to reach an agreement through negotiations, it is conceivable to first attempt resolution through alternative dispute resolution (ADR) procedures, rather than immediately filing a request for arbitration. In such cases, the specific points of contention and evidence clarified through ADR can contribute to the efficiency of the arbitration review process. Therefore, the progress and results of ADR procedures have been added as items to be described.

(2) Conditions Presented to the Patent Holder

Article 31(b), first sentence, of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which is Annex 1C to the Marrakesh Agreement Establishing the World Trade Organization, contains the following provision.

“…such [other] use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time.”

Excerpt from Source 1 (underlining added for this article)

From the perspective of facilitating the smooth deliberation of arbitration decisions, and to clearly demonstrate that the request for arbitration meets the requirements of the above provision, the conditions presented to the patent holder have been added as an item to be included in the form.

Operational Guidelines for the Arbitration System

The requirements such as “when negotiations have failed” and “when it is particularly necessary for the public interest” have been clarified.

(1) Requirement of “when negotiations have failed”

The requirement of “when negotiations have failed” is defined as follows.

“(1) In Article 83, paragraph 2; Article 92, paragraphs 3 and 4; and Article 93, paragraph 2 of the Patent Act, the phrase “when negotiations have failed” refers to cases where negotiations were attempted but did not result in an agreement, and “when negotiations cannot be established” refers to cases where the party seeking a license requested negotiations for the purpose of obtaining a license, but the rights holder did not indicate any intention to negotiate. Specific examples of such cases include not only the failure of direct negotiations between the parties, but also cases where, after such failure, alternative dispute resolution (ADR) procedures were used but a settlement could not be reached.”

Excerpt from Source 6

(2) Requirement of “when it is particularly necessary for the public interest”

The requirement of “when it is particularly necessary for the public interest” (including examples and points for consideration) is defined as follows.

“(6) In Article 93, paragraph 1 of the Patent Act, major examples of cases where it is “particularly necessary for the public interest” include the following:

(i) Cases where it is particularly necessary in fields directly related to the protection of the lives or property of the public, or the construction of public facilities, or the daily lives of the people.

(ii) Cases where the refusal to grant a non-exclusive license for the relevant patent would hinder the sound development of the relevant industry as a whole, and as a result, it is recognized that there would be a substantial adverse effect on the daily lives of the public.

(7) When considering whether something is “particularly necessary for the public interest,” the following points, among others, should be taken into account:

(i) The patent holder cannot sufficiently meet the demand, and it is necessary to take appropriate measures to address such demand.

(ii) There is no reasonable alternative means to achieve the same public interest.

(iii) If the applicant for the arbitration decision can promptly and appropriately implement the business utilizing the patented invention, and the public interest cannot be secured without such implementation (for example, if the business utilizing the patented invention cannot be replaced by other means, or if the technical content of the invention is essential for the business, and there is a clear and reasonable doubt as to whether the requirements of the relevant administrative agency, etc., can be met without it, this would apply).

(iv) The public interest should be ensured even after taking into account the impact on the respondent.”

Excerpt from Source 6

It should also be noted that, with regard to arbitration procedures, a revised law allowing for restrictions on access to documents containing trade secrets submitted during arbitration procedures came into effect on July 3, 2023 (see Source 7).

Sources (all in Japanese only)