Injunctions and Hold-up under Weak Patent Protection
1
조회
0
다운로드
0
인용
0
참고문헌
키워드
초록
This paper analyzes how injunctions relate to patent hold-up problems. To this end, we present a simple model of licensing negotiations between a patent holder and a downstream firm in the shadow of litigation. More specifically, we consider the situation in which an injunction is granted as a matter of course if a patent is found valid and infringed upon in litigation, but the patent holder may be under-compensated due to aspects of the patent remedy system other than injunctions. We show that if the downstream user is unaware of the patent before any investment in initially designing its product, the patent hold-up problems created by injunction threats are worrisome when (i) the redesign process is costly, (ii) the degree of patent protection (by aspects of the patent remedy system other than injunctions) is sufficiently strong and (iii) the injunction is requested not to practice the patented technology exclusively but to collect excessive patent royalties. Even if the downstream user is aware of the patent before the initial investment, the patent hold-up problems do not disappear. The findings here imply that a discretionary approach is required towards denying injunctions against patent infringement. If the degree of patent protection is not sufficiently strong, denying injunctions can exacerbate the under-compensation problem. However, once patent protection improves enough (not necessarily perfectly), we may see a surge of patent hold-up problems, and it would be better to apply alternative patent remedies in place of injunctions when necessary. Lastly, we discuss several possible alternatives to injunctions and their pros and cons.
Abstract
This paper analyzes how injunctions relate to patent hold-up problems. To this end, we present a simple model of licensing negotiations between a patent holder and a downstream firm in the shadow of litigation. More specifically, we consider the situation in which an injunction is granted as a matter of course if a patent is found valid and infringed upon in litigation, but the patent holder may be under-compensated due to aspects of the patent remedy system other than injunctions. We show that if the downstream user is unaware of the patent before any investment in initially designing its product, the patent hold-up problems created by injunction threats are worrisome when (i) the redesign process is costly, (ii) the degree of patent protection (by aspects of the patent remedy system other than injunctions) is sufficiently strong and (iii) the injunction is requested not to practice the patented technology exclusively but to collect excessive patent royalties. Even if the downstream user is aware of the patent before the initial investment, the patent hold-up problems do not disappear. The findings here imply that a discretionary approach is required towards denying injunctions against patent infringement. If the degree of patent protection is not sufficiently strong, denying injunctions can exacerbate the under-compensation problem. However, once patent protection improves enough (not necessarily perfectly), we may see a surge of patent hold-up problems, and it would be better to apply alternative patent remedies in place of injunctions when necessary. Lastly, we discuss several possible alternatives to injunctions and their pros and cons.
참고문헌 (25)
- 차상육, "표준필수특허에 기초한 금지청구권 행사의 제한 가능성 -한국과 미국 판례의 대비적 분석을 중심으로-", 지식재산연구, 10(4), pp.61~108 (2015), 한국지식재산연구원[DOI]
- Comparative Research on Damages Calculation in Patent Infringement Litigation, "Chang, Hyun-Jin", International IP Law Research Center, ~ (2017)
- 조영선, "특허침해로 인한 금지권의 상대화(相對化)에 대하여", 경영법률, 25(4), pp.425~458 (2015), 한국경영법률학회
- Choi, Jay Pil, "A Model of Patent Trolls", International Economic Review, 59(4), pp.2075~2106 (2018)
- "BlackBerry maker, NTP ink & 612 million settlement", CNN Money, ~ (2006)
- Cotter, Thomas F., "Research Handbook on the Economics of Intellectual Property Law" (2019), Edward Elgar Publishing
- Farrell, Joseph, "Standard Setting, Patents, and Hold-Up", Antitrust Law Journal, 74(3), pp.603~670 (2007)
- Farrell, Joseph, "How Strong Are Weak Patents?", American Economic Review, 98(4), pp.1347~1369 (2008)
- Gallini, Nancy T., "The Economics of Patents: Lessons from Recent U.S. Patent Reform", Journal of Economic Perspectives, 16(2), pp.131~154 (2002)
- Ganglmair, Bernhard, "Patent Hold Up and Antitrust: How a Well-Intentioned Rule Could Retard Innovation", Journal of Industrial Economics, 60(2), pp.249~273 (2012)
- "Predatory Patent Litigation: How Patent Assertion Entities Use Reputation to Monetize Bad Patents" (2013)[URL]
- "The Story Behind the BlackBerry Case", IEEE Spectrum, ~ (2006)
- 오승한, "FRAND 확약 특허권자의 자발적 실시자에 대한 금지청구권의 행사와 독점규제법 위반 책임", 경쟁법연구, 29, pp.217~278 (2014), 한국경쟁법학회
- 김영희, "한국 특허침해소송제도에서의 소송 남용 규제에 대한 타당성 검토", 지식재산연구, 10(1), pp.31~54 (2015), 한국지식재산연구원[DOI]
- Lemley, Mark, "Probabilistic Patents", Journal of Economic Perspectives, 19(2), pp.275~298 (2005)
- Lemley, Mark, "Patent Hold-Up and Royalty Stacking", Texas Law Review, 85, pp.1991~2049 (2007)
- Lemus, Jorge, "Patent Privateering, Litigation, and R&D Incentives", The RAND Journal of Economics, 48(4), pp.1004~1026 (2017)
- Shapiro, Carl, "Injunctions, Hold-Up, and Patent Royalties", American Law and Economics Review, 12(2), pp.280~318 (2010)
- Property Rules vs. Liability Rules for Patent Infringement, "Shapiro, Carl", ~ (2017)
- Sidak, J. Gregory, "Ongoing Royalties for Patent Infringement", Texas Intellectual Property Law Journal, 24(161), pp.161~213 (2016)
- A Study on Limiting the Right of Patent Owners to Seek Injunctive Relief for Patent Infringement, "Sim, Kyoungbo", Korea Development Institute, ~, pp.Policy Research Series 2018-16 (2018)
- 심미랑, "특허침해금지청구에 대한 새로운 판단기준의 필요성", 법제연구, (44), pp.571~610 (2013), 한국법제연구원
- 손호진, "특허권의 부당한 행사에 대한 규제 － 비실시특허권자의 특허침해금지청구권의 남용을 중심으로 －", 안암법학, (34), pp.823~862 (2011), 안암법학회[DOI]
- 송재섭, "표준특허에 근거한 권리행사의 한계 - 침해금지청구권과 손해배상청구권을 중심으로 -", 저스티스, 140, pp.210~249 (2014), 한국법학원
- The Wall Street Journal, "RIM to Pay NTP $612.5 Million To Settle BlackBerry Patent Suit", ~ (2006)