Asia Patent Alliance

Jointly owned applications and patents in Japan, China and Korea

 The table below shows how patent applications and patent rights with more than one applicant/ right holder are handled in the three countries.

Japan

China

Korea

Registration of each applicant`s shares in the application documents

RFE by a single applicant

Exploitation of the invention by a single applicant

(Can be regulated in a contract)

(Can be regulated in a contract)

(Can be regulated in a contract)

 

If an application is filed by several applicants, the share of the right is determined. For example depending on the contribution to the invention it can be decided that applicant A owns 70% and applicant B owns 30% of the right. The share of each applicant can be registered in the application documents in Japan and Korea. In China this is not possible and the share can only be fixed in a contract between the related parties. We believe that for jointly owned applications such a contract is important.
Also in Japan, China and Korea separately from the patent application a request for examination (RFE) has to be filed. In Japan and Korea the RFE can be filed by a single applicant alone. This is because in these two countries everyone can file a request for examination. In China it is decided that only the representative of the applicants can file the RFE, therefore applicants other than the representative cannot request examination alone.
As next point we would like to explain about the exploitation of the invention (production and sales of the invented product) by a single applicant. In Japan, China and Korea as a general rule exploitation by a single applicant is possible. If a separate contract is established between the related parties, exploitation by a single applicant can be restricted.

The second table explains who is able to request prohibition and compensation for damages in the case of jointly owned patent rights.

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Japan

China

Korea

Request for prohibition

Can only be done by all owners in general

Can only be done by all owners if no contract has been established

Can only be done by all owners in general

Request for compensation for damage

Can be done by a single owner in general

Can only be done by all owners if no contract has been established

Can be done by a single owner in general


In Japan, China and Korea there is no legal regulation about the exercising of shared patent rights. In China, if a contract has been signed between the related parties, it will have priority. (Chinese Patent Law Article 15) For exercising of the right the consent of the co-owners will be required. However there is also the opinion that if the exercising of the right results in a benefit for the co-owners exercising by one owner alone is also possible.

In Japan and Korea there are different theories.One says that a request for prohibition and demand for compensation for damage can be submitted by one owner alone, another says that a request for prohibition can only be made by all owners and another one says that compensation for damages can only be demanded by one owner alone regarding their share of the right. (The last one is considered to be plausible.)