On March 31, 2022, the Japanese Ministry of Economy, Trade and Industry (METI) released guidelines concerning the negotiation of SEP licenses. The METI description states:
In recent years, disputes have arisen worldwide on licensing
Standard Essential Patents (SEPs) due to the widespread use of standards and
the complication of technologies required for such standards. In particular, as
the Fourth Industrial Revolution progresses in which many products will be
computerized and processing data will create new added-value, SEP licensing
among different industries, especially those in which Japan has strengths
(e.g., automobiles, construction machinery and factories), is expected to
expand in the future. Therefore, it is crucial for Japan to consider measures
to resolve such disputes efficiently.
In light of this situation, the Competition Enhancement Office
and the Intellectual Property Policy Office of Ministry of Economy, Trade and
Industry (METI) held the “Study Group on Licensing Environment of Standard
Essential Patents” (hereinafter referred to as “the Study Group”). The Study
Group, comprised of representatives from industry and experts on intellectual
property and competition law, has discussed the measures preferable for Japan.
Considering problems faced by SEP holders and implementers caused by low
predictability and transparency due to the absence of clear rules on the SEP
licensing negotiations as well as international trends, METI indicated that “the
Japanese government will promptly consider and externally disseminate the rules
on good faith negotiations that should be complied with by both SEP holders and
implementers” in the interim report of the Study Group published in July 2021,
so that good faith negotiations between the parties may encourage early
settlements and avoidance of unnecessary disputes, leading to the development
of Japanese industries.
Following this policy, METI asked domestic and foreign
companies, etc., about their opinions on actions at each of the main steps of
SEP licensing negotiations, and METI also asked opinions on the same contents
on the website. The Study Group discussed good faith negotiations with
reference to these opinions. METI then established the “Good Faith Negotiation
Guidelines for Standard Essential Patent Licenses” (hereinafter referred to as “the
Guidelines”), considering the results of the discussions. METI also published a
report that indicates the process of discussions to establish the Guidelines in
the Study Group.
The Guidelines are the norms of good faith negotiations
provided by the Japanese government to be followed by SEP holders and implementers
involved in SEP licensing negotiations, including Japanese patents, to realize
an appropriate licensing environment through improvement of transparency and
predictability of the negotiations. The Guidelines are not legally binding and
do not guarantee that, even if followed, negotiations can be judged to be in
good faith in each individual case as there are no clear global rules for SEP
licensing negotiations. However, METI expects that various parties related to
SEP licensing negotiations, such as those in the negotiations and the
judiciary, utilize the Guidelines, because METI established the Guidelines
considering opinions of domestic and foreign companies, etc., industries and
experts on intellectual property and competition law in Japan. METI will also
utilize the Guidelines to realize an appropriate licensing environment of SEPs.
The Guidelines are available, here. The Report is available, here (in Japanese). A document summarizing the differences between the Guidelines and the JPO document on negotiating concerning SEPs is available, here.
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