Japan’s Patent Act Article 93 allows for enforced licensing of a patent for the public interest, but it has never been successfully used. However, that may change. Takahashi Masayo (Ph.D.) was the first to successfully transplant retinal cells generated through induced pluripotent stem cells to a human patient in 2014. She was working for the major research institute RIKEN when she did the innovation that was claimed in a patent owned by RIKEN and collaborator Healios.[1] In 2019 she left RIKEN to focus on applications of the technology she had developed, heading up Vision Care Inc. and its affiliate VC Cell Therapy (based in Kobe).[2]
Now, Dr. Takahashi has announced she has appealed to the government to get RIKEN and Healios to sign off on a license to use the technology she helped to develop. She claims she had expected Healios to push forward with clinical trials for it, but it has not, leaving the technology wasted while people await its help. After seeking permission to do its own clinical trials, Vision Care supposedly was unable to get permission or licensing from Healios regarding the patented technology. So Dr. Takahashi is moving into legal proceedings to force use of the patent.[1]
What are the options for would-be licensees to force a license under the Japanese patent system? There is a patent law procedure enabling this, but in fact it has only been tried once in Japan’s history and failed.[1] Takahashi is able, under Patent Act Article 93, to file a plea for the Japanese Ministry of Economy, Trade and Industry (METI) to investigate the situation to determine if a “Non-exclusive License in the Public Interest” is justified. If METI judges so, it could require RIKEN and Healios to license the technology to Vision Care and VC Cell Therapy.[3]
RIKEN has said it would consider how to proceed based on its policies, while Healios declined to comment.[1] This case brings Article 93 into public view and may help set a pattern for innovators with unused technology seeds in the future, so please stay tuned.
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Contact: Taro Yaguchi
Sources
[1] Asahi Shimbun. ”特許技術の使用求め裁定請求 iPS細胞初移植の高橋政代氏 [First iPS cell transplanter Takahashi Masayo seeks arbitration to start using patented technology].” https://www.asahi.com/articles/ASP9X5GYWP9QPLBJ01K.html September 28, 2021. Accessed September 30, 2021.
[2] Vision Care Inc. “Member.” https://www.vision-care.jp/Member Accessed September 30, 2021.
[3] English translation (March 18, 2021 translation): Japan Law Translation, “特許法 [Patent Act].” http://www.japaneselawtranslation.go.jp/law/detail/?id=3693&vm=04&re=01&new=1 Accessed September 30, 2021.
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