1. To apply for the standard essential patent evaluation, the applicant must take the following steps in accordance with the provisions of Articles 3 and 14 of the Procedural Rules for Essential Patent Evaluation.

(1) Submit the designated Application Form for Standard Essential Patent Evaluation to the JIPAC Secretariat. Download the example format of application form and fill in all required items for submission.

(2) Attach the following to the application form.
(a) Materials considered to prove the reason(s) for the application (essentiality of the patent to the standard) and the list of the materials
(b) Patent publication
(c) A copy of the patent register
(d) A complete set of the file wrapper
(e) A document that prove the qualification of representative, if the applicant is a juridical person
(f) A document that shows the right of proxy (a power of attorney), if a proxy is appointed
(g) The Oath and Consent Form in the format designated by the Licensing Organization in Appendix 2, if requested by the Licensing Organization

(3) Where to submit the documents
Secretariat of Japan Intellectual Property Arbitration Center (JIPAC)
Benrishikaikan Bldg., 3-4-2 Kasumigaseki, Chiyoda-ku, Tokyo 100-0013, Japan
Phone: +81 (0)3-3500-3793, Fax: +81 (0)3-3500-3839
Email:

Since the whole procedure is electronic, the applicant is to prepare all required documents including the application form in electronic format and submit them electronically. For how to submit such data, be sure to contact the JIPAC secretariat beforehand as such application documents must be uploaded to a specific folder to be set for each application. The applicant will be notified of the specific folder set for the application. All subsequent communication related to the application between the applicant and the evaluators/JIPAC, including delivery of the written evaluation result, will be made via this specific folder.

(Note 1) In the “Reason for application” field in the Application Form for Standard Essential Patent Evaluation, provide descriptions about the correspondence between the range of claims of the subject patent and the applicable standard(s) with a comparison table as shown in the attached Application Form for Standard Essential Patent Evaluation by JIPAC (example).

(Note 2) The list specified in (a) must contain the information such as the material numbers, material names, dates of preparation, preparers, and relationship between the proof and the reason to be proven. Indicate the material numbers in such a way, for example, “Material 1,” “Material 2.”

(Note 3) If any of the documents submitted to the Japan Patent Office as materials specified in (a) including application documents, documents received from the Japan Patent Office, patent publication, and related prior literature is cited for explanation, the cited parts must be clarified by means of enclosing the part with a red frame and such.

(Note 4) If the applicant is a juridical person, submit the Certificate of Qualification of Representative or a certified copy of commercial registration (within three (3) months from the date of issue) as a document that proves the qualification of the representative specified in (e). These documents can be obtained at the competent Regional Legal Affairs Bureau having jurisdiction over the location of the juridical person.

(Note 5) The format of Oath and Consent Form specified in (g) is also available on the website of ULDAGE Inc. at http://www.uldage.com/.

(Note for the evaluation of essential patents for the digital cable broadcasting standards)
For the information to be provided in the subject part(s) of applicable standards field in the Application Form for Standard Essential Patent Evaluation, note the following instructions specific for the digital cable broadcasting standards in addition to the general instructions provided in (Note 5) in the end of the application form (format). (Added on Feb. 8, 2008)

When the ARIB standards are applied mutatis mutandis to (aligned with or cited in) the subject parts of the applicable JCTEA standards/JLabs operational specifications among the digital cable broadcasting standards, the mutatis mutandis application must be clearly and specifically described in the subject part(s) of applicable standards field, for example, “ (specify the part(s)) of the ARIB standards (standard number and title, version number, and date) applied mutatis mutandis to (aligned with or cited in)  (specify the part(s)) of the JCTEA or JLabs standards (standard number and title, version number, and date).”

2. The application fees for standard essential patent evaluation set under an agreement made with ULDAGE Inc. are as follows.

(1) When the number of patent claims subject to the evaluation is not more than two (2): 762,000 yen plus tax
(2) When the number of patent claims subject to the evaluation is not more than four (4): 952,000 yen plus tax
(3) When the number of patent claims subject to the evaluation is more than four (4): An addition of 95,000 yen plus tax per claim (from fifth one)

The application fees must be paid into the following bank account.

< Bank account >
Account holder’s name: Japan Intellectual Property Arbitration Center
Bank name: Kasumigaseki Branch, Sumitomo Mitsui Banking Corporation
Account: 6559091 (Savings Account)

3. When an application for essential patent evaluation is submitted, JIPAC will appoint a pair of evaluators consisting of a lawyer and a patent agent/attorney, who are neutral and impartial and have no interest in the application, to conduct the evaluation. The standard essential patent evaluation result is to be prepared within two (2) months from the receipt of the application.

4. For any questions about the procedures for applying for standard essential patent evaluation, contact JIPAC at the following.

Contact: Secretariat of Japan Intellectual Property Arbitration Center (JIPAC)
Address: Benrishikaikan Bldg., 3-4-2 Kasumigaseki, Chiyoda-ku, Tokyo 100-0013, Japan
Phone: +81 (0)3-3500-3793
Fax: +81 (0)3-3500- 3839
Email:
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