New Licensing Scheme for NIMS Red Phosphor Patent

The National Institute for Materials Science (NIMS, based in Tsukuba, Ibaraki Prefecture; Kazuhito Hashimoto, President) will change the licensing scheme for its comprehensive patent on red phosphor, which has been widely used in light-emitting diodes (LEDs). Effective October 1, 2018, NIMS will divide this patent, which has been licensed to phosphor manufacturing companies, into two groups: a group of materials/manufacturing patents related to the manufacture of phosphors and a group of application patents related to the manufacture of LED devices, etc. NIMS will then enter new licensing contracts with companies to which these patents are applicable.

The new licensing scheme will apply to the patents on the nitride red phosphor by the name of CASN, SCASN or 1113 phosphor  (hereinafter referred to as “S/CASN phosphor”). Originally, companies manufacturing LED devices, etc. (hereinafter referred to as “device, etc. manufacturers”) were able to purchase S/CASN phosphors from phosphor manufacturing companies holding NIMS’ comprehensive patent license (hereinafter referred to as “designated phosphor manufacturers”) and use them to produce LED devices, etc. without acquiring an application patent license from NIMS; the sublicense for an application patent was automatically acquired upon purchase of S/CASN phosphor. However, this licensing scheme did not allow NIMS to effectively enforce its patent right to prevent companies from purchasing S/CASN phosphors from unlicensed phosphor manufacturers and using them to produce LED devices, etc.
NIMS decided to take action to protect the profits of designated phosphor manufacturers and device, etc. manufacturers holding the sublicense and to prevent loss of its patent revenue resulting from the reduced practical use of NIMS products. To ensure appropriate, large-scale patent right enforcement, NIMS has divided its comprehensive S/CASN phosphor patent into a group of materials/manufacturing patents—which will continue to be licensed to designated phosphor manufacturers—and a group of application patents, which will be licensed to device, etc. manufacturers intending to purchase S/CASN phosphors from designated phosphor manufacturers. Thus, the new licensing scheme will enable NIMS to directly license device, etc. manufacturers.

We believe that the new licensing scheme will enable NIMS to encourage both unlicensed phosphor manufacturers and the device, etc. manufacturers that are their phosphor customers to acquire S/CASN phosphor patent licenses from NIMS. This should lead to increased public use of phosphors and LED devices produced by properly licensed manufacturers. NIMS will continue to take appropriate and vigorous action, including the enforcement of NIMS’ patent rights, in order to strengthen stable development and legal compliance in the LED and phosphor industries.