Earticle

초록

영어

(1) Patent troll refers to (2) non-practicing entities that (3) stack up patents or buy patent rights from other patent right holders to create a patent wall (4) with which they claim excessive license fee or compensation for damages against companies or exercise patent rights to file infringement litigation. Trolls have both sides of coins and bring positive effect and negative effect. There are many controversial issues about trolls. This Paper describes what are patent trolls and how to regulate patent trolls. In order to solve problems of patent trolls I'll examine the U.S approaches and then research the regulation tools and strategies for the patent troll issues in Korea. I'll suggest some improvement measurements for the legal framework and policy for example restriction on joinder or injunction. There is discussion about restricting the injunction, the best weapon of patent trolls applying the four test of eBay case. According to the principles of equity admitting the preliminary (or permanent) injunction should be determined by the following four elements: (1) whether the damage causes irreparable harm or not, (2) whether there are other adequate remedies or not, (3) considering balance of hardship between the parties, and (4) the injunction causes harm to public interest. This is similar to the provision of preliminary injunction requirements (the Clause 2, Article 300 of Civil Execution Act). Therefore the bargaining power by automatical preliminary injunction can not be enjoined in Korea. The necessity of reserve to prevent significant damage or imminent danger should be strictly limited to forbid patent troll's abusive behaviors. There is an opinion which prevents trolls from exercising the injunction right and give them only monetary compensations. However, it is not consist with the nature of exclusive right. It is a better idea to use compulsive license in the Antitrust law rather than liability rule. The problems joining unrelated defendants in the same action are serious in patent trolls' litigation in U.S. Someone states that the defendants can not be joined simply because the same patent is infringed and the number of defendants per litigation should be limited. In patent litigations the American Invent Act is amended to prevent patent trolls' strategies of multiple defendants joinder. It amends the permissive joinder rule that defendants can not be joined if they don't arise out of the same facts and transactions. The court also prevents the trolls' joinder in some cases. I consider this is useful to remove trolls' negative effect of bad behaviors. If patent trolls' patents are the standard essential patents (SEPs), the injunction by trolls can be illegal in the Antitrust law because they break the commitment of FRAND (fair, reasonable and non-discriminatory) license term. It may be dominant position abuse if tolls refuse to license even to the willing licensee.

목차

I. 서
 II. 특허괴물의 의의
  1. 특허괴물의 개념과 행위
  2. 구별 개념 : 특허행사주체(PAE)
 Ⅲ. 미국에서의 특허괴물에 대한 규제방안
  1. 서
  2. 입법적 규제방안
  3. 사법상 규제방안
  4. 기타
 Ⅳ. 한국에서의 특허괴물에 대한 규제
  1. 민법상 권리남용 법리의 적용
  2. 특허법상 규제방안
  3. 독점규제법 상 규제방안
  4. 기타 규제방안: 신탁법상 무효 주장
 Ⅴ. 입법적 제언 등
  1. 침해금지청구권의 제한 조항 신설
  2. 피고병합 요건의 강화
  3. 지식재산권의 부당한 행사에 대한 심사지침의 개정
  4. 특허 등 지식재산권 투자기업 육성
 참고문헌
 

키워드

특허괴물 표준필수특허 피고병합 제한 침해금지청구권 제한 특허법 독점규제법 NPE patent troll non-practicing entity standard essential patent restriction on joinder restriction on injunction patent law antitrust law

저자

• 강보라 [ Kang, Bo La | 고려대학교 법학박사 ]

참고문헌

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