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Security Interests in Intellectual Property Licences Under Japanese Law: a Comparative Analysis

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Security Interests in Intellectual Property Licences Under Japanese Law: a Comparative Analysis Security Interests in Intellectual Property Licences under Japanese Law: A Comparative Analysis Gabriele Koziol I. Introduction II. Intellectual Property Licences 1. Patent and trademark law 2. Copyright law 3. Comparative remarks III. Creation of Security Rights in Intellectual Property Licences 1. Pledge 2. Transfer as security 3. Licence as security 4. Comparative remarks IV. Rights and Obligations of the Parties to the Security Agreement 1. Right to exercise the licence 2. Preservation of the secured property V. Insolvency 1. Licence and insolvency 2. Security rights in licences and insolvency 3. Comparative remarks VI. Conclusion I. INTRODUCTION In the wake of the global emergence of a knowledge-based economy, intangible assets have become a key economic factor. Japan is particularly well known for her advanced position as regards technology, reflected by the large number of patents registered that rank among the highest worldwide. 1 The Japanese legislator, too, has acknowledged the importance of intellectual property. Thus, the Intellectual Property Basic Act 2 of 2002 explicitly states in its Article 1 that the promotion of intellectual property is necessary 1 R. TAPLIN , Intellectual property and the new global Japanese economy (London 2009) 25; CH. HEATH , Intellectual property and anti-trust, in: Röhl (ed.), History of law in Japan since 1868 (Leiden 2005) 419 et seq. 2 Chiteki zaisan kihon-hô , Law No. 122/2002, Engl. transl. available at http://www.japaneselawtranslation.go.jp ; quotations are based on this translation. Each year so-called strategic programmes ( chiteki zaisan senryaku daimô ) are issued on the basis of the Intellectual Property Basic Act; see also TAPLIN , supra note 1, 25. 156 GABRIELE KOZIOL ZJ APAN R / J.J APAN .L for the objective of realizing a dynamic economy and society that is based on the crea- tion of added values through the creation of new intellectual property and effective exploitation of such intellectual property in light of a growing necessity for intensify- ing the international competitiveness of Japanese industry in response to the changes in the social and economic situations at home and abroad. Given its economic importance, intellectual property represents a large part of corporate value. Thus, there is an growing need to use intellectual property assets also as security in order to obtain credit. Often, however, owners of intellectual property do not – or do not exclusively – exploit their patents, trademarks or copyrights themselves but rather grant a right of use, a so-called licence, to a third party, the licencee. 3 Licences are also valuable assets and are increasingly used as security. A software company, for instance, which develops software while incorporating software components that it licenses from third parties might offer its right to use and incorporate software components licensed from third parties as security in order to obtain credit. 4 Using intellectual property and licences as security involves a number of specific problems that are not encountered with “traditional” types of security. In practical respects, it is in particular the valuation of intellectual property and also the realization of security rights that cause problems, as there are often no ready markets available for intellectual property assets. In recent years security rights in intellectual property have become a topic of research both in Japan 5 and in Germany. 6 Security interests in 3 On the practical importance of patent licences, see K. YAMAGAMI , Tokkyo raisensu keiyaku no jitsumu-jô no mondai-ten [Practical problems regarding patent licence contracts], in: Kin’yû Shôji Hanrei 1236 (2006) 156. 4 See UNITED NATIONS COMMISSION ON INTERNATIONAL TRADE LAW , UNCITRAL Legisla- tive Guide on Secured Transactions Supplement on Security Rights in Intellectual Property (New York 2011) para. 41. 5 See, for instance, T. HABU , Chiteki zaisan-ken tanpo yûshi [Financing based on intellectual property as security] (Tokyo 2008); K. KAMATA , Chiteki zaisan tanpo no riron to jitsumu [Theory and practice of intellectual property as security] (Tokyo 1997); IDEM ., Chiteki zaisan-ken tanpo o meguru hôteki sho-mondai [Various legal problems involved in using intellectual property as security], in: Kin’yû Hômu Jijô 1444 (1996) 6 ; K. SENGOKU , Chiteki zaisan-ken tanpo yûshi no jitsumu [Financing based on intellectual property rights as security in practice], in: Ginkô Hômu 21 (1996) 10; Y. TAKAISHI , Chiteki shoyû-ken tanpo [Intellectual property rights as security] (Tokyo 1997). 6 See, for instance, C. WOESTE , Immaterialgüterrechte als Kreditsicherheit im deutschen und US-amerikanischen Recht, (Osnabrück 2002); A. BRÄMER , Die Sicherungsabtretung von Markenrechten (Tübingen 2005); TH. KNÜPFER , Marken als Kreditsicherheit (Frankfurt a.M. 2003); A. WARTH , Marken als Grundlage der Kreditsicherung (Frankfurt a.M. 2007); CH. KLAWITTER / L. HOMBRECHER , Gewerbliche Schutzrechte und Urheberrechte als Kredit- sicherheiten, in: Wertpapiermitteilungen 2004, 1213; J. KOTTHOFF / D.A. PAULY , Software als Kreditsicherheit, in: Wertpapiermitteilungen 2007, 2085; H. SCHMIDT , Urheberrechte als Kreditsicherheit nach der gesetzlichen Neuregelung des Urhebervertragsrechts, in: Wert- papiermitteilungen 2003, 461. Nr. / No. 31 (2011) SECURITY INTERESTS IN INTELLECTUAL PROPERTY LICENCES 157 licences, however, which in essence are rights in rights in rights, trigger yet further, specific problems that so far have hardly been dealt with. An analysis of Japanese law shows that there are clear and consistent provisions which make it indeed feasible in practice to grant security rights in licences. For a German lawyer this is of particular interest, as German intellectual property laws tend to impair rather than facilitate the use of licences as security. Thus, German provisions as they stand are in need of reform. In framing new intellectual property laws, Japanese law could well serve as a model in particular as regards provisions on licences and the creation of security interests in them. This paper therefore attempts to give an overview of the Japanese provisions on patent, trademark and copyright licences as security and to analyse them in comparison to German law. 7 The main focus of the analysis lies on the nature of intellectual proper- ty licences (II.), the creation of security rights in licences (III.), the rights and obliga- tions of the parties to the security agreement (IV.) and insolvency (V.). II. INTELLECTUAL PROPERTY LICENCES Before dealing with the creation of security interests, it is necessary to take a closer look at the nature of the security concerned, i.e. the nature of intellectual property licences. While in German law, for instance, there is a huge controversy as to what kind of right a licence actually grants, which is fostered by the near absence of explicit provision on licences in the intellectual property laws, Japanese law provides straightforward and consistent rules on licencing. 1. Patent and trademark law Under the Patent Act (PA) 8 and the Trademark Act (TMA),9 two types of licences are available: so-called special licences ( sen’yô jishi-ken or sen’yô shiyô-ken )10 and ordi- nary licences ( tsûjô jisshi-ken or tsûjô shiyô-ken ). 11 7 For a more detailed comparative study on intellectual property licences as security under German, Austrian and Japanese law, see G. KOZIOL , Lizenzen als Kreditsicherheiten. Zivil- rechtliche Grundlagen in Deutschland, Österreich und Japan (Tübingen 2011) on which this paper is based. 8 Tokkyo-hô , Law No. 121/1959 as amended by Law No. 16/2008. Engl. transl. available at http://www.japaneselawtranslation.go.jp. 9 Shôhyô-hô , Law No. 127/1959 as amended by Law No. 16/2008. Engl. transl. available at http://www.japaneselawtranslation.go.jp. 10 The Patent Act uses the term jisshi-ken , which literally translates as right to exercise, while the Trademark Act refers to licences as shiyô-ken (right to use). As the provisions are large- ly the same under both acts, in the following the term “licence” will be used for both. 158 GABRIELE KOZIOL ZJ APAN R / J.J APAN .L a) Special licences Special licences are provided for in Article 77 PA and Article 30 TMA, respectively, and grant the licencee an exclusive right to use the patent or trademark. Within the range of the licence granted, the IP owner himself is no longer entitled to use the patent or trademark or grant further licences. 12 The special licence only becomes effective upon registration in the patent or trade- mark register (Art. 98(1) no. 2 PA, Art. 30(4) TMA). This is in line with the provisions on the creation of the patent or trademark itself, which also stipulate registration as a prerequisite for effectiveness. Registration of the licence requires consent of the licenser. While it is generally acknowledged by doctrine 13 that the licenser has a duty to register the licence arising out of the licence agreement, case law 14 has held that there is no duty of the licenser to register. The courts’ view has rightly been criticised, as it is rather problematic if the licencee has no means to assert the effectiveness of the rights granted to him under the licence agreement. 15 Upon registration the licence also takes effect against third parties without any further prerequisites. 16 The licence is thus also effective against someone subsequently acquiring the patent or trademark from the licenser. The licencee is entitled to seek an injunction or to claim damages in his own name if his rights are infringed by third parties (Art. 100, 102 PA, Art. 36, 38 TMA). 17 Special licences can be transferred provided the licenser consents. 18 Only in the case of general succession, including inheritance, or if the licence is transferred together with 11 For an English language introduction to patent licences, see also H. KAWAGUCHI , The essentials of Japanese patent law (The Hague 2007) 135 et seq. ; T. DOI / W.C. SHATTUCK (eds.), Patent and know-how licensing in Japan and the United States (Seattle 1977). 12 Cf. also ÔSAKA BENGOSHI -KAI .
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