비특허제품에 실시료를 부과하는 '전체판매 실시료'(total - sales royalty) 규정의 특허권 남용 여부 - 대법원 2014. 11. 14. 선고 2012다42666(본소) 및 2012다42673(반소) 판결을 중심으로 -

A total-sales royalty provision (“TSR provision”) is a provision in a patent license agreement which imposes royalty on unpatented products sold by the licensee as well as patented products. The Korean Supreme Court 2012Da42666 and 2012Da42673 decisions first time in Korea handled said provision. This paper discusses whether a TSR provision misuses patent right and/or contradicts with the antitrust law. Regarding the issue, the U.S.A. has maintained such a jurisprudence that if the provision was not coerced, no patent misuse is acknowledged. The existence of coercion is determined by considering: negotiation history, existence of other unfair provisions, portion of unpatented products, easiness of royalty calculation, number of relevant patents, etc. Europe seems to hold stricter stance on a TSR provision than the U.S.A. and discusses the provision under the antitrust law perspective. In Japan and Korea, there has been no meaningful discussion, and just have been a few simple citations of American jurisprudence. Regarding the provision at issue, the Seoul High Court did not admit effect of the provision on the scope which is over the patent right scope, on the other hand, the Supreme Court admitted easiness of royalty calculation and, without referring to patent misuse, held the provision valid. It is this authors’ firm belief: it was possible to argue that the provision was introduced for the easiness of the two parties, however considering many evidences demonstrating coercion by the patentee, the Seoul High Court’s determination was more reasonable than the Supreme Court’s determination. It is this authors’ hope that this paper may devote to establishment of new Korean standard to determine patent misuse of a TSR provision.