Requirements for Consent in Patent “Correction” Procedures
2026.01.05
SKIP
When protecting a patent in Japan, there are two primary “Correction” procedures to consider. One is the “Request for Correction” filed as a defensive measure to protect a patent against a Patent Opposition or a Trial for Invalidation. The other is the “Trial for Correction” initiated by the patentee to rectify defects or narrow the scope of claims discovered after the patent has been registered.
In these procedures, while examining technical patent requirements such as novelty and inventive step is paramount, it is equally vital to pay close attention to the formal “Consent” procedures.
Overlooking the necessary consent can lead not only to rejection or dismissal of the correction procedure by the JPO but also to future legal disputes and the risk of the patent being revoked or invalidated.
- Registered Exclusive Licensees and Pledgees:A statutory requirement under Article 127 and related articles of the Patent Act; prior consent is always mandatory.
- Non-exclusive Licensees:No longer a statutory requirement for JPO procedures under Article 127 and related articles, but contractual obligations may still apply.
- Action: Always verify both the “Patent Register” (to identify statutory parties) and the “License Agreement” (to identify contractual obligations) before filing any procedures.
- Trial for Correction: Governed directly by Article 127.
- Request for Correction during a Patent Opposition: Governed by Article 120-5 (9), which applies Article 127 mutatis mutandis.
- Request for Correction during a Trial for Invalidation: Governed by Article 134-2 (9), which applies Article 127 mutatis mutandis.
