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IT 분야의 NPEs 특허 분쟁과 전략적 대응

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NPEs-Raised Patent Disputes in IT Industry and Strategic Response

함수영

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NPE, standing for Non-Practicing Entity, can be defined in a broad sense as a business concern which reserves patents without engaging itself in producing or manufacturing products. Most of NPEs possess patent acquired from others, enforce it against manufacturers for royalty earnings. "Patent Troll" is a pejorative term referring to a certain group belonging to NPEs "that enforce its patents against one or more alleged infringers in a manner considered unduly aggressive or opportunistic", as defined in U.S. online dictionary, Wikipedia. Enforcing its patent right inordinately, filing lawsuits or otherwise enforcing rights aggressively, and showing up in the market for opportunistic pursuit of its patent right when patented technology ripens enough in the market, these Patent Trolls are under harsh criticism that they work against industry development, and the very goal patent system is purposed for. So the patent-abusing Patent Troll should not be considered identical to NPEs who exercise their rights duly and appropriately under the patent system. Behind the growth of patent business of NPEs lie pro-patent tendency in the United States and some NPEs’ practice of reaping high profit from enforcing patent, followed by lawyers who establish licensing companies to join the market. Such growth is continuing at an accelerated pace currently, geared to increasing market investment by Invention Capital. Furthermore, the legal and patent environment of the United States provides itself a stage favorable to patent holder in enforcing rights. Defendants are burdened with risk of injunction against infringement, huge liability for damage and little success with defense of "invalidity of patent". All this environment works in favor of patent holders raising patent infringement claims, granting NPEs with substantial bargaining power. From this soil, NPEs’patent business has grown to current prosperity with 325 NPEs at large as of April, 2010. The patent licensing market in the United States grew up to 150 billion dollars in 2006, and patent infringement litigation increased to approximately 600 cases in 2009. Thicketed with patent as technology grows multi-sided, advanced and mutually incorporating and converging with thousands of techniques clustering around a single product, IT is the area full of potential patent disputes. Since it is not practically possible for a manufacturer to have all the patent required to produce its product, cases of involvement in conflict with someone else’s patent abound. It is also impossible to survey all the patents and avoid them or enter into licenses for all of them previously. Especially,since plenty of patents owned by NPEs are with legal issues such as ambiguous scope of patent rights, no business entity in IT industry may be practically expected to clear all the prospective obstacles and compete in brand-new market. With such a rapid development of IT technology, it would be impractical to review all the patents to be disclosed one-and-half years later or develop products after completely checking out all the patents that are continuatively applied or re-issued. Given that IT is the NPE-friendly arena in enforcing patent right and that IT products, backed up by its standardization, has constructed global market with astronomical quantity in transaction worldwide, attracting patent claim for expected profit, NPEs intensively buy IT related patents. Out of 325 NPE’s in total, 75% are conducting its business in IT area, and IT-related cases represent 90% of patent infringement lawsuits brought by NPE’s. Furthermore, 75% of judgment for large amount damage award exceeding 100 million dollars come out of IT area, and 75% of IT cases arise from patent infringement suits raised by NPE’s. The fact that the 27 manufacturers most frequently sued by NPEs are all IT companies simply demonstrates that IT area is the battlefield for patent disputes. Using the lawsuit of patent infringement claim as a means to threat, NPE’s settle early with target manufacturers into license agreement, as is inferred of cell phone industry, where 95% of NPE-rised lawsuits are settled and dismissed within a year. Prospectively, this patent business of NPEs is expected to find its place in the IP industry, coupled with rapid growth of patent transaction market. The patent market will see participation of traditional non-practicing patents owned by universities or research centers and patents of venture companies,small-and-medium-sized companies and large corporations in turn. As cross-licensing practice between manufacturers declines in number,converting into open licensing, which mutually gives and takes values of patents owned, licensing market will explode in its scale, resulting in increasing number of patent transactions. To prepare for emerging market of technology transfer and growing industry of intellectual property, it is imperative to build up legal and institutional environment where fair enforcement of patent right is secured whereas undue enforcement of patent rights is regulated. Also necessary is to keep promoting industry of intellectual property so as to see healthy technology market which useful patented technology flows into and manufacturing companies obtain technology from. Since revitalization of patent business might burden the manufacturers with increased license royalties, however, manufacturers should thoroughly prepare themselves for patent claims raised by NPEs against them. Required in this connection is dispute-preventing system, efficient defense and joint efforts with other entities in handling lawsuits, and strategic approach to negotiation with NPEs. Desirably under this intellectual property environment, IT companies should carry IP management strategies intwo respects. First, they should endeavor to remove redundant royalties through risk control over patent claims from NPEs and minimize royalties via strategic bargaining. Secondly, it is now more important than ever to create patents worthy of monetary transaction in patent trading market where cash conversion is readily available, especially in the IT area, which is the core of market. In an environment that guarantees materialization of the value of patent as proprietary right with exclusive power, patent production will play a major role for a corporation to achieve increase of exclusive profit and competitive power in blue ocean.

목차

Ⅰ. 서론
 Ⅱ. NPEs의 특허 비즈니스 활동과 현황
  1. NPEs와 Patent Troll의 구분
  2. NPEs 특허 비즈니스의 배경
  3. 미국에서 NPEs 특허 비즈니스 동향
  4. NPEs 특허 비즈니스의 문제점 검토
 Ⅲ. IT 분야의 특성과 NPEs의 특허 분쟁 동향
  1. IT 분야의 특허 환경과 NPEs 특허 분쟁의 특성
  2. IT 분야에서 NPEs의 특허 분쟁 동향
  3. IT 분야 미국 특허 분쟁 사례와 시사점
 Ⅴ. 특허 비즈니스 산업의 전망
  1. 특허 비즈니스 산업의 성숙
  2. 향후 특허 비즈니스 산업의 전망
 Ⅳ. 전략적 대응 방안
  1. 기업의 대응 방안
  2. 법⋅제도적 대응 방안
  3. 지식재산 산업의 육성
 Ⅵ. 결어
 참고문헌
 

저자정보

  • 함수영 Ham, Su-young. 특허경영연구원 (주)원니스 대표이사, 전 LG전자(주) 특허센터장/상무

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