１．Background
Company X was requested by Company Y, which was a manufacturer supplying its products to User Company A, to develop a product. Supported in part by financial assistance for development from Company Y, Company X successfully developed the product, which was then delivered to User Company A through Company Y. But because the product had a defect, Company Y corrected the defect itself and delivered the corrected product to User Company A. Thereafter, a patent application for the product, filed by Company X was registered as a patent, but Company X received no orders from Company Y. Thus Company X applied for mediation.
２．Purposes of the application
Company X, the applicant, sought to demand an injunction of Company Y's manufacture and sale of the product and compensation for damages caused by Company Y's working of Company X's patented invention in the past. In addition, Company X " demand from Company Y the placement of orders with Company X for the manufacture of related products to be delivered to User Company A.
３．Arguments of the respondent
Company Y, the respondent, argued that although this patent is regarded as being solely owned by Company X, considering the circumstances of its development, the patent should originally be owned jointly by Companies X and Y. In addition, the invention itself was made by an employee of Company Y. As such, Company Y has a prior use right to this patent right, too.
４．Point in dispute
Company Y, the respondent, also acknowledged that the product they have manufactured and sold fell within the technical scope of the patented invention. Therefore, the point in dispute was who should be the patentee.
５．Conclusion
Company Y will pay ￥1 million to Company X for dispute resolution. Company X will transfer the patent in question to Company Y.
６．Characteristics of this case
In this case, the ownership of the patent right was the point in dispute and there were complicated problems. But the dispute was finally settled through cooperation among the mediators, applicant and respondent.