표준특허에 관한 유럽의 최근 동향 - 특허법과 경쟁법의 대립과 조화의 모색 -

Since the Orange-Book-Standard decision(Az. KZR 39/06) was issued on May 6, 2009 by the Federal Court of Justice of Germany(German: Bundesgerichtshof, BGH), a series of recent smartphone-related disputes in many regions and countries have concerned a right holder’s ability to obtain injunctive relief for putative infringer’s infringement of FRAND- encumbered Standard Essential Patents(SEP). There is a decision from the U.S. ITC that if a putative licensee refuses to pay what has been determined to be a FRAND royalty, or refuses to engage in a negotiation to determine FRAND terms, such a refusal could amount to a constructive refusal to negotiate. The Japanese IP High Court similarly issued a decision that an SEP holder can seek injunctive relief against an unwilling licensee though the IP High Court refused to issue a preliminary injunction against Apple in a suit between Samsung and Apple involving SEPs. On the other hand, there are recent decisions from EU Directorate-General for Competition opining that the enforcement of SEP-based injunctive rights could constitute a breach of competition law under certain circumstances in the case of Samsung Electronics and Motorola investigations. In the aftermath of Orange Book Standard, the FRAND defense seemed to be tested successfully in court at least in Germany. But European commission disagreed with that. On March 21, 2013, the District Court of Dusseldorf referred five questions to the Court of Justice of the European Union(“CJEU”) concerning the availability of remedies to the SEP holders. It will be a key point whether CJEU interprets the patent right of standard-essential-patent owner as a proprietary right in the context of traditional patent law or does the enforcement of the right as an abuse of dominant position like a EU commission. Reaching final decision would take time because of the burden which the decision will heavily influence on each court of member states. The point CJEU should contemplate before rendering the final decision is to stick a balance between the unfairness that can cause decrease of incentive to innovation by excluding the injunction right and consequently causing reverse-holdup and the unreasonableness that results in royalty payment for actually invalid patent by forcing the implementer to reserve the right to challenge through unconditional offer.