표준특허의 제문제 ‐ ITC의 배제명령 발동가능성 문제를 포함하여 ‐

If there is a patent monopoly on the technology which was just adopted as astandard in the specific field, the technical standardization which has been activelydone mainly in the field of information and communication technology can beexploited as a framework of restrictions on competition under which competitors areeven not able to access the market. To dispel this concern, almost all the StandardSetting Organizations (SSOs) try to prevent all the participants of standardizationfrom the following wrongdoings by enforcing intellectual property rights policy:so-called “patent ambush” which means any participant who already holds a patentor a pending patent on the issued technology induces the technology to be adoptedas a standard by SSOs without prior notice about the existence of his/her own patentinterest and so-called “patent hold-up” which means any holder of Standard EssentialPatent (SEP) exercises the patent right in discriminatory way such as collecting anexcessive royalty fee from an intimidated licensee by threatening with injunction. Inparticular, with respect to the patent hold-up, SSOs require all the participants ofstandardization to previously declare that he/she will grant a license to anyone underthe fair, reasonable and non-discriminatory (FRAND) condition. If the SEP holder did patent ambush or breached FRAND declaration by doingpatent hold-up, many countries tend to restrict the exercise of right by the patentholder by treating such wrongdoing as breach of contract, implied license or violationof estoppel in some cases and patent misuse or violation of antitrust law in othercases. Even though the recent trend in the United States including the Princo decision by the Court of Appeals for Federal Circuit seems denying the possibilityof intrinsic patent misuse defense against SEP, such trend could be reversed in thefuture. In Korea, the real patent misuse defense has never been accepted by thecourt. Even though the arguably fake patent misuse defense has been widelyaccepted as an artificial tool to obstruct the enforcement of any patent right havingclear reason for invalidation but not yet being declared as invalid, we need to payattention the benefits of real patent misuse defense against SEP which can be judgedseparately from the determination on the violation of antitrust law. To eradicate rampant patent hold-up activities by SEP holders in the US and otherdeveloped countries like EU, some strong opinions emerged and have been more andmore widely supported which argues that, unlike other patents, SEP should not bevested with injunction power in principle. These opinions are based on the theorythat the FRAND declaration shall bind between the patent holder and not only SSOsbut the 3rd party including future licensees or that the eBay ruling of the USSupreme Court in 2006 which recognized a discretionary power of the court aboutinjunction order did open the possibility of a patent without injunction power. Theauthorities in charge of the antitrust laws in the above countries seem to take tougherstance against the injunction power of SEP. This article reveals the following differencesbetween the above new opinions and the traditional views which commonly recognizethat, even in SEP-related disputes, the injunction power should be given in principlebecause it is a vital part of patent against infringement. First, when the injunctionclaim should be finally denied due to the existence of patent hold-up by a SEPholder, the former find the ground for such denial in the binding effect of FRANDdeclaration while the latter justify such denial with patent misuse or violation ofantitrust law. Second, under the former, SEP holders will be given a weakenedbargaining power because he/she will never be able to exercise injunction powereven though the bargain will fail unless he/she will prove any violation related tothe FRAND by the opponent which is not an easy task. Moreover, this article arguesthat the new opinions supporting the SEP without injunction power are not plausibleat least at this point in Korea because the specific grounds presented by suchopinions are not matching with the related situations in Korea and the monetary damages as the other remedy against patent infringement has not been well workingin Korea, unlike in the US. Meanwhile, when considering that SEP holders have depended more and more onthe exclusion order by the US International Trade Commission (ITC) rather than oninjunction order by the federal court which became difficult to get after the eBayruling of the US Supreme Court, Korean authority should establish in advance aclear policy on the direction for future development of Korean Trade Commission(KTC) and Korea Customs Services (KCS) which are now sharing the sameresponsibility as ITC for border measures against patent infringement. As an exampleof such development, it could be possible that KTC would be changed into aquasi-judicial agency or KCS would be reinforced with more professional capabilityto determine patent infringement. Despite that some US scholars and other authoritiessuch as US FTC severely criticize any exclusion order by ITC given to SEP andthat in actual case of ITC the exclusion order based on Samsung’s SEP was justvacated by rare exercise of presidential veto power, this article argues that Koreanscholars and authorities had better focus on more sincere protection of patent rightsincluding SEP rather than too worry about rampant abuse of patent power at thispoint because the related circumstances in Korea are still totally different as statedabove.