Reforming and Specifying IPR Policies of Standard-Setting Organizations: Towards Fair and Efficient Patent Licensing and Dispute Resolution
|關鍵字:||標準制定組織;智慧財產權政策;標準關鍵專利;公平合理無歧視條款;禁制令;Standard-Setting Organization;Intellectual Property Rights Policy;Standard-Essential Patents;Fair, Reasonable and Non-Discriminatory Terms;Injunctive Relief|
Standard-setting organizations (SSOs) rely on commitments to license on fair, reasonable, and non-discriminatory (FRAND) terms from standard-essential patent (SEP) holders to ensure access to standards and prevent potential anti-competitive conduct that unreasonably enforces SEPs against standard implementers. However, a substantial number of SEP disputes have been raised unceasingly in recent years. This research conducts a quantitative analysis on the SEP cases in the United States from 2000 to 2014 and the results show that the SEP disputes are highly related to the FRAND terms used by the SSOs in the information and communications technology (ICT) sector. The results of chi-square tests indicate that the intellectual property rights (IPR) policies, particularly the FRAND terms therein, are statistically significantly associated with the antitrust assertions. It appears that the IPR policies and the FRAND terms might fail to function properly. Nonetheless, according to opinions to date from the U.S. Court of Appeals for the Federal Circuit, the U.S. International Trade Commission, the U.S. competition authorities, the European Commission, and the Court of Justice of the European Union, there is no per se rule that prohibits seeking injunctive relief against SEP infringement. The criteria to decide whether to grant injunctive relief are different among various forums. In principle, injunctive relief should not be granted against a standard implementer who is willing to take license and is still negotiating in good faith with the SEP holder, considering the SEP holder’s commitment to license on FRAND terms. As regards FRAND royalties of SEPs, a fundamental principle among several SEP royalty determinations in the United States is that a royalty award for an SEP shall be apportioned to the value of the patented invention, not including the value of standard. FRAND royalties of SEPs can be calculated by means of the Georgia-Pacific hypothetical negotiation; however, there is no specially modified version of Georgia-Pacific factors for FRAND-encumbered SEPs. Furthermore, through semi-structured interviews with standard-setting delegates and licensing negotiators from the ICT industry, this research finds that many existing IPR policies are too ambiguous to constrain potential anti-competitive conduct that enforces SEPs in an unreasonable way. Actually, in light of the results of the quantitative survey, the case analysis, and the stakeholder interviews, it has become urgent and imperative to improve existing vague and ambiguous IPR policies. Concrete proposals for reforming IPR policies include: defining the standard essentiality clearly and using the accurate phrase “essential patent claim;” adding specific deadlines for SEP disclosure and declaration, legal effects of failure to disclose and declare, and update obligations for material changes on the rights of SEPs; incorporating prerequisite conditions for seeking injunctive relief against SEP infringement; clarifying the FRAND obligation applicable to all offers of SEP royalties during licensing negotiations; identifying a series of steps or key factors for SEP royalty calculation under the FRAND obligation; and allowing reciprocal license to be a precondition for the commitment to license on FRAND terms. These amendments could substantially strengthen existing IPR policies, fix their ambiguities, and avoid potential disputes. Finally, this research investigates 15 representative SSOs, examining whether their IPR policies conform to the reforming proposals, by way of which the author further elaborates these proposals and provides substantial suggestions on how to amend the existing policies of the representative SSOs to avoid potential disputes. Based on the quantitative and qualitative analysis and the specific reforming proposals, this research concludes that it is imperative to reform existing IPR polices to facilitate fair and efficient SEP licensing and dispute resolution, to promote competition and economic development, and to benefit all customers around the world ultimately.
|Appears in Collections:||Thesis|