Someone Stole My Invention and Filed a Patent in Japan! What Are My Options?

Japanese Attorney at Law - Bengoshi L.L.

• 8 min read

Discovering that someone else has taken your invention and improperly filed for—or even obtained—a patent in Japan is a deeply concerning situation for any innovator or business. This unauthorized act, known in Japan as an "application by a non-entitled person" (冒認出願 - bōnin shutsugan), directly contravenes the fundamental principle that the right to obtain a patent belongs to the true inventor or their legitimate successor. Fortunately, Japanese patent law provides several avenues for true right holders to reclaim their inventions and rectify the situation.

This article explores the concept of such unauthorized applications and details the significant remedies available in Japan, particularly focusing on the robust mechanism for demanding the transfer of an improperly filed application or granted patent.

I. Understanding "Application by a Non-Entitled Person" (冒認出願 - Bōnin Shutsugan) in Japan

A. The "Inventor Principle" and the Right to Obtain a Patent

At the heart of Japanese patent law is the "inventor principle," which dictates that the right to obtain a patent (tokkyo o ukeru kenri) for an invention initially and rightfully belongs to the true inventor(s) or their legitimate assignee(s). Only those who genuinely possess this right are entitled to file a patent application and be granted a patent.

B. What Constitutes an Application by a Non-Entitled Person?

An application by a non-entitled person occurs when an individual or entity files a patent application without possessing the legitimate right to do so for that specific invention. This can manifest in several ways:

  • Outright Theft or Misappropriation: An invention is stolen, or confidential information is misused, and the unauthorized party files a patent application in their own name.
  • Breach of Contract or Fiduciary Duty: An invention is disclosed under a non-disclosure agreement or within a relationship of trust (e.g., to a potential manufacturing partner), and the recipient improperly files for a patent.
  • Disputes Among Collaborators/Joint Inventors: One or more individuals who contributed to an invention are improperly excluded, and others file the application claiming sole entitlement.
  • Fraudulent Change of Applicant Name: Even if an application is initially filed by the correct party, the applicant's name might be fraudulently changed during prosecution through forged assignment documents or other deceptive means. This is referred to as the "unauthorized name change type" (mudan meigi henkō-gata), as opposed to the "unauthorized filing type" (mudan shutsugan-gata) where the initial filing is by the wrong party. The legal remedies discussed below generally apply to both scenarios.

An application filed by a non-entitled person is fundamentally flawed and faces severe consequences under Japanese patent law:

  • Grounds for Rejection: During the examination phase, if the Japan Patent Office (JPO) determines that the applicant is not the true right holder, the application will be rejected (Article 49(vii) of the Patent Act).
  • Grounds for Invalidation: If a patent is mistakenly granted based on such an application, it is subject to an invalidation trial (Article 123(1)(vi)). A successful invalidation renders the patent void ab initio (as if it never existed).
  • Timing of Assessment: The determination of whether an applicant is non-entitled is typically made as of the time of the JPO's decision (e.g., examination decision or trial decision in an invalidation proceeding).
  • Possible "Cure" or Ratification: If the non-entitled applicant subsequently and legitimately acquires the right to obtain the patent from the true owner before a final decision on the application, the defect may be cured. Similarly, if a patent has been granted to a non-entitled person, the true right holder can later ratify the patent's existence in the hands of that person, which may resolve the ground for invalidity based on non-entitlement.

While rejection or invalidation removes the improperly obtained right from the non-entitled party, these actions do not, by themselves, transfer the right to the true inventor. For that, more specific remedies are needed.

II. Remedies for the True Inventor or Right Holder

Japanese law offers several powerful mechanisms for true inventors to assert their rights and recover control over their inventions when faced with an unauthorized application or patent.

A. Pre-Grant Remedy: Correcting the Applicant's Name

If an unauthorized patent application is still pending (i.e., before a patent is granted), the true right holder can take steps to have the applicant's name changed to their own.
This typically involves:

  1. Seeking a court judgment confirming that the true right holder is the party entitled to obtain the patent for the invention in question.
  2. Upon obtaining such a judgment, the true right holder can then file a request with the JPO, accompanied by the court judgment, to amend the applicant's name on the pending application.

This allows the true inventor to take over the prosecution of their invention.

B. Post-Grant Remedy: Demanding Transfer of the Patent (Article 74)

A more significant remedy, particularly impactful after a patent has already been granted to a non-entitled person, is the right to demand transfer of the patent (特許権移転請求権 - Tokkyoken Iten Seikyūken), as stipulated in Article 74 of the Patent Act.

  1. The Essence of Article 74:
    This provision, substantially strengthened by amendments in 2011, allows the person who genuinely has the right to obtain a patent (the true right holder) to file a lawsuit demanding that the patent, erroneously granted to the non-entitled party, be transferred to them.
    • Against Whom? The demand can be made against the current holder of the improperly granted patent. Importantly, even if the non-entitled person who initially obtained the patent subsequently assigned it to a third party, the true right holder can still demand transfer from that current third-party owner.
  2. Background to the 2011 Amendment Strengthening Article 74:
    Prior to the 2011 reforms, the path for a true inventor to reclaim an already granted patent was less direct. While invalidation was possible, directly transferring the patent was generally not a recognized remedy.
    • A landmark Supreme Court decision, the Raw Garbage Disposal Device Case (Judgment of June 12, 2001), did allow for a patent transfer in a specific scenario involving an "unauthorized name change" during prosecution. However, the situation remained ambiguous for cases where the application was filed by a non-entitled person from the outset. Lower courts often denied transfer in such "unauthorized filing" cases.
    • The 2011 amendment codified and expanded the right to demand transfer, making it available regardless of whether the non-entitlement arose from an initial unauthorized filing or a subsequent unauthorized change of applicant name. This provided a much clearer and more comprehensive remedy for true inventors.
  3. Profound Effects of a Successful Transfer Claim:
    If a court rules in favor of the true right holder and orders the transfer of the patent:
    • Retroactive Ownership: The patent is deemed to have belonged to the true right holder from the very beginning (Article 74(2)). This means the true right holder retroactively becomes the patentee for the entire term of the patent.
    • Ability to Claim Past Damages: Because ownership is retroactive, the new (true) patentee can potentially claim damages for infringements that occurred even before the transfer was officially registered in their name.
    • Impact on Licenses Granted by Non-Entitled Patentee: Any licenses or other rights (e.g., security interests) granted by the non-entitled patentee generally lose their effect as against the true right holder once the transfer is complete, as the grantor had no legitimate right to grant them in the first place.
    • Curing of the Invalidity Ground: The successful transfer of the patent to the true right holder cures the specific ground for invalidity related to the patent having been granted to a non-entitled person (Article 123(1)(vi) parenthesis). The patent, now in the correct hands, is no longer vulnerable to invalidation on that particular basis.
  4. Prior Art Status of the Unauthorized Application (Interaction with Article 74):
    Before the 2011 amendment, an application filed by a non-entitled person was generally not considered prior art against a subsequent, valid application filed by the true inventor for the same invention (due to a provision in former Article 39(6)). The primary remedy was for the true inventor to secure their own patent after the unauthorized one was invalidated or rejected.
    • The 2011 amendment removed this exception, meaning that an unauthorized application now generally does have prior art effect (e.g., for novelty and inventive step purposes, and under Article 29-2 concerning earlier-filed, later-published applications by others).
    • The rationale for this change was to prevent the true right holder from potentially obtaining "double patents" for the same invention – one acquired through a transfer under Article 74, and another through their own separate, later-filed application. With the robust transfer mechanism now available under Article 74, this is considered the primary route for the true inventor to secure the patent rights that were improperly taken.

C. Protection for Bona Fide Parties: The "Intervening Right for Working by a Non-Entitled Person" (冒認中用権 - Bōnin Chūyōken) (Article 79-2)

What if the non-entitled person who obtained the patent (or their licensee) was acting in good faith, unaware of the defect in title, and had already started working the invention or made substantial preparations to do so before the patent was demanded to be transferred to the true owner? To strike a balance and protect such innocent parties from undue hardship, Article 79-2 of the Patent Act (also introduced in 2011) provides a form of statutory license.

  1. Purpose: This provision, often referred to as an "intervening right" in the context of an unauthorized application, aims to protect those who, in good faith, relied on the apparent validity of the patent held by the non-entitled person.
  2. Requirements for the Intervening Right:
    • The patent must have been transferred to the true right holder based on a demand under Article 74 (due to an unauthorized application).
    • Before the registration of the true right holder's demand for transfer, the original (non-entitled) patentee, or an exclusive licensee or non-exclusive licensee who had obtained their license from this non-entitled patentee, must have been, in good faith (i.e., without knowledge that the patent was based on an unauthorized application):
      • Commercially working the patented invention in Japan, OR
      • Making preparations for such commercial working in Japan.
  3. Effect of the Intervening Right:
    If these conditions are met, the bona fide party obtains a statutory non-exclusive license to continue working the invention.
    • Scope: This license is limited to the scope of the invention and the business purpose for which it was being worked or prepared before the demand for transfer was registered.
    • Remuneration: This is not a free license. The party enjoying this intervening right must pay reasonable remuneration to the true patentee (now the actual owner of the patent) (Article 79-2(2)).

This provision ensures that innocent parties who made investments based on the apparent patent are not abruptly forced to cease operations entirely, while still ensuring the true inventor receives compensation for the ongoing use of their invention.

D. Parallel Remedies in Cases of Joint Application Violations (Article 38)

Similar principles apply if a patent is granted based on an application filed by only some of the rightful co-inventors (or their legitimate successors) in violation of the requirement for joint application by all entitled parties (Article 38).

  • The omitted co-owner(s) can also demand the transfer of their respective share(s) in the patent under Article 74(1).
  • If such a transfer of shares occurs, protections similar to those under Article 79-2 are available for bona fide parties who were working the invention or preparing to do so based on rights granted by the initially registered (but incomplete set of) patentees.

III. Strategic Considerations for True Inventors

If you believe your invention has been misappropriated and an unauthorized patent application or patent has been filed in Japan:

  • Gather Evidence: Meticulously document your invention process, including dates, contributions, and any disclosures made. Evidence of the non-entitlement of the other party (e.g., breach of NDA, proof of derivation) will be crucial.
  • Act Promptly: While remedies exist, delaying action can complicate matters. Monitor patent filings if you suspect potential misappropriation.
  • Choose the Appropriate Remedy:
    • If the application is pending, seeking a change of applicant name might be the quickest route.
    • If a patent has been granted, demanding transfer under Article 74 is generally the most direct way to secure the patent rights for yourself. Invalidation is another option, but it only nullifies the patent; it doesn't transfer it to you.
  • Legal Counsel: Navigating these procedures, particularly court actions for confirming rights or demanding transfer, requires specialized legal expertise in Japanese patent law and litigation.
  • International Scope: If the invention theft or unauthorized filing also involves other countries, a coordinated international legal strategy will be necessary, as remedies are jurisdiction-specific.

Conclusion

The scenario of having one's invention stolen and improperly patented is a serious threat to innovators. Japanese patent law, particularly through the robust provisions of Article 74 allowing for the transfer of erroneously granted patents, and Article 79-2 providing a degree of protection for bona fide intervening users, offers a clear pathway for true right holders to reclaim their intellectual property. While the legal processes can be complex and require careful navigation, these remedies underscore Japan's commitment to the "inventor principle" and to ensuring that patent rights ultimately reside with those who are genuinely entitled to them. Vigilance in protecting one's inventive efforts and prompt action in the face of misappropriation are key to leveraging these legal protections effectively.