표준필수기술(SEP)의 다단계 실시 약정(Multi-Level Licensing)에 대한 최초판매원칙의 적용과 그 효력

Recently, one of the most debated legal patent issues is including SEP(Standard Essential Patent) owners’ misuse practices, ‘multi-level licensing’. The multi-level licensing means that a patent proprietor could control licensees with post-sale restrictions after the patent products have already been sold in any multi-stage distribution chain, regardless of their legal purchasing process for them. The particular issue of this practice is whether SEP proprietor should be allowed to contract around the first sale doctrine, saying that when a patent holder allows another party to sell a patented item, the patent holder’s right to exclude with respect to the patented item is exhausted. In the case of Mallinckrodt, Inc. v. Medipart, Inc. in 1991, the Federal Circuit disregarded this rule. Following the conclusion, the multi-level licensing has been factually authorized without their effects for patent trade. However, the Supreme Court in the U.S. in the case of 2017 Impression, has still confirmed that, even when a patentee sells an item under an express, otherwise lawful restriction, the patentee does not retain patent rights in that product. Thus, the SEPs’ ‘multi-level licensing’ should not be allowed any more.