NPEs의 역할과 규제에 관한 신 고찰- 미국 특허법(AIA) 개정에 따른 변화를 중심으로 -

A patent right is an exclusive right, and so has a relatively high level of potential risk of misuse because it is difficult to clearly determine the scope of right, unlike other proprietary rights. Therefore, the scope of discretion of a judge can be considered as relatively broad in judging infringement of patents, and whether misuse of a patent is recognized may be influenced by the flow of governmental policies related to reinforcement of a patent right due to such nature of the right. Meanwhile, historically, the U.S. has alternately promoted policies for reinforcing patent rights and policies for restricting the exercise of patent rights. Since the Motion Picture case (1917) recognized the ‘misuse of patent’ doctrine for the first time, this doctrine has been promoted under which a remedy for patent infringement may be suspended if such measure violates public policies for promoting public interests by facilitating new and useful inventions. In the 1960s and 1970s, the scope of application of ‘misuse of patent’ doctrine has been expanded under the circumstances where hostility toward invasive exercise of a patent become excited, and throughout 1980s and 1990s, the scope of authority of patents has been expanded through the promotion of Pro-Patent Policy, which is in sync with the trend of a large amount of damage in patent infringement litigations. Under such trend, NPEs, which carry out revenue-generating activities through patent infringement lawsuits without licensing its patents, have been emerged at the beginning of 2000. In particular, movements for regulating the activities of NPEs have been proactively developed because the awareness that human and physical capitals to be invested in technical innovation and development have been wasted due to abusive lawsuits by aggressive NPEs has been widespread. Because NPEs do not provide only the negative functions from the social and economic perspective but have the positive functions supporting commercialization of technologies by businesses with limited capital through vitalization of patent transaction, we have to recognize their positive contribution in the countries which attempt R&D vitalization and creation of economic values through increase in value of intellectual property, such as Korea. Therefore, it is necessary to carry out a policy for reinforcing intellectual properties in the appropriate and harmonious manner, not the unconditionally regulating manner. Currently, the U.S. has made efforts to establish a plan for harmonization of intellectual property right laws and competition laws for the purpose of reinforcing technical innovation. For example, the U.S. manages intellectual properties, based on various policies, on a pan- governmental scale, by establishing the ‘Act on Distribution and Organization of Intellectual Property Resource with Priority’ in 2008. In addition, with the 2011 amendment of America Invents Act (AIA) after 60 years of its enactment, the patent system and policy of the U.S. have currently encountered historical turning point. Meanwhile, it is meaningful, considering the fact that it includes many regulations and provisions related to NPEs which has been at the center of patent infringement claims. Even though any provisions related to a damage claim which has attracted attention in the draft of PRA (Patent Reform Act) amendment were not included in the draft of amendment, it is necessary to pay attention to whether legislative regulation can be effectively and actually achieved because the AIA contains many provisions limiting NPEs’ activities in a direct or indirect manner. Furthermore, judicial regulation in the eBay case 92006) also drastically reduced a possibility of injunctive relief by making the existing criteria for automatic approval of application for an order of injunctive relief for patent infringement more strict, and thus there is much attention towards future decisions.