특허권 남용의 법리에 관한 신 고찰

Abstract

Recently, legal problems have arisen from the emergence of so-called patent trolls based mostly in the U.S. These entities attempt to make inappropriate large profits from the patents acquired from other parties but are not worked by them. They,however, threaten third parties that work the patented inventions by filing a litigation or imposing unreasonable conditions at the negotiation for license of the patents. Exercise of patent should not contravene the objectives of the patent system, which purports encouragement of inventions for technical development. One of the strong legal theories for preventing unreasonable exercise of patent rights is the patent misuse doctrine. However, the doctrine is not well developed in Korea. The general doctrine of abuse of rights under the Civil Code fails to establish specific standards and guidelines for patent misuse. The Korean Patent Act also includes only fragmentary provisions on patent misuse, which fails to establish specific standards therefor. The Monopoly Regulation and Fair Trade Act of Korea, of which objectives are mostly related to regulation of restraint of competition is not fit to regulate patent misuse. It means that there have been no appropriate regulations to control patent misuse in Korea. Thus, new regulations for preventing unreasonable exercise of patent rights such as patent misuse should be installed in order to cope with the recent phenomena of patent trolls and others. Since there is no international norm for patent misuse doctrine, we have to rely on the constitutional considerations and general theory of law such as the good faith principles. The Korean Constitution declares any exercise of property right be in conformity with the social welfare. If, therefore, an exercise of a patent right is not in conformity with the public welfare and is contrary to the principle of good faith , it may constitute patent misuse. The examples of the patent misuse are (1) the patentee lacks justifiable interest in an exercise of his/her patent rights, (2) an exercise of a patent right brings about conspicuous imbalance between a patentee and third party against whom the patentee exercises his/her rights, (3) an exercise of a patent right disrupts a balance of societal interests, and (4) an exercise of a patent right contravenes the economic or social objectives of the patent system. Patent misuse can be found not only in defensive acts to prevent infringement of patent rights including measures for injunctive relief and damages against patent infringement, but also active exercise of patent rights such as working of patented inventions by the inventors, and permitting others to work the inventions, and thus, includes all acts for realizing legal effects of patent rights. The Patent Misuse Guidelines drafted by the Korean Forum for Prevention of Patent Misuse in 2009, attempt to meet the need to proffer practical criteria to determine instances of patent misuse and specify limits to the exercise of patent rights while guaranteeing reasonable exercise of patentees’ rights. The Guidelines show their efforts to maintain a balance in the working of a patented invention between the patentee and its counterparts. Formulation of the comprehensive criteria in determining whether patent misuse or not by the Guidelines should be highly appreciated and further developed at the global level in the future.