KDI Journal of Economic Policy

Korea Development Institute (한국개발연구원)
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Injunctions and Hold-up under Weak Patent Protection

  • Received : 2020.05.06
  • Published : 2020.05.31
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Abstract

This paper analyzes how injunctions relate to patent hold-up problems. To this end, we present a simple model of licensing negotiations between a patent holder and a downstream firm in the shadow of litigation. More specifically, we consider the situation in which an injunction is granted as a matter of course if a patent is found valid and infringed upon in litigation, but the patent holder may be under-compensated due to aspects of the patent remedy system other than injunctions. We show that if the downstream user is unaware of the patent before any investment in initially designing its product, the patent hold-up problems created by injunction threats are worrisome when (i) the redesign process is costly, (ii) the degree of patent protection (by aspects of the patent remedy system other than injunctions) is sufficiently strong and (iii) the injunction is requested not to practice the patented technology exclusively but to collect excessive patent royalties. Even if the downstream user is aware of the patent before the initial investment, the patent hold-up problems do not disappear. The findings here imply that a discretionary approach is required towards denying injunctions against patent infringement. If the degree of patent protection is not sufficiently strong, denying injunctions can exacerbate the under-compensation problem. However, once patent protection improves enough (not necessarily perfectly), we may see a surge of patent hold-up problems, and it would be better to apply alternative patent remedies in place of injunctions when necessary. Lastly, we discuss several possible alternatives to injunctions and their pros and cons.

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References

  1. Cha, Sang Yook. 2015. "The Possibility of Limitations on the Exercise of an Injunction Right Based on Standards Essential Patents: Focusing on a Comparative Legal Analysis between the US and Korea," Journal of Intellectual Property, 10(4): 61-108 (in Korean). https://doi.org/10.34122/jip.2015.12.10.4.61
  2. Chang, Hyun-Jin. 2017. Comparative Research on Damages Calculation in Patent Infringement Litigation, International IP Law Research Center (in Korean).
  3. Cho, Young-Sun. 2015. "A Study on the Proportionality of Injunction against Patent Infringement," Journal of Business Administration & Law, 25(4): 425-458 (in Korean).
  4. Choi, Jay Pil and Heiko Gerlach. 2018. "A Model of Patent Trolls," International Economic Review, 59(4): 2075-2106. https://doi.org/10.1111/iere.12330
  5. CNN Money. 2006. "BlackBerry maker, NTP ink & 612 million settlement," March 3.
  6. Cotter, Thomas F. and John M. Golden. 2019. "Empirical Studies Relating to Patents - Remedies," Ben Depoorter, Peter Menell and David Schwartz (eds.), Research Handbook on the Economics of Intellectual Property Law, Edward Elgar Publishing.
  7. Farrell, Joseph, John Hayes, Carl Shapiro, and Theresa Sullivan. 2007. "Standard Setting, Patents, and Hold-Up," Antitrust Law Journal, 74(3): 603-670.
  8. Farrell, Joseph and Carl Shapiro. 2008. "How Strong Are Weak Patents?" American Economic Review, 98(4): 1347-1369. https://doi.org/10.1257/aer.98.4.1347
  9. Gallini, Nancy T. 2002. "The Economics of Patents: Lessons from Recent U.S. Patent Reform," Journal of Economic Perspectives, 16(2): 131-154. https://doi.org/10.1257/0895330027292
  10. Ganglmair, Bernhard, Luke M. Froeb, and Gregory J. Werden. 2012. "Patent Hold Up and Antitrust: How a Well-Intentioned Rule Could Retard Innovation," Journal of Industrial Economics, 60(2): 249-273. https://doi.org/10.1111/j.1467-6451.2012.00480.x
  11. Hovenkamp, Erik. 2013. "Predatory Patent Litigation: How Patent Assertion Entities Use Reputation to Monetize Bad Patents," available at SSRN: http://ssrn.com/abstract=2308115.
  12. IEEE Spectrum. 2006. "The Story Behind the BlackBerry Case," March 1.
  13. Oh, Seung-Han. 2014. "The Execution of Injunctive Relief Based on the FRAND-encumbered SEP for 'Willing Licensee' and its Responsibility under Antitrust Law," Journal of Korean Competition Law, 29: 217-278 (in Korean).
  14. Kim, Young-Hee. 2015. "Review and Analysis of Need for Implementing Regulatory Framework for Patent Infringement Lawsuit Abuses in Korean," Journal of Intellectual Property, 10(1): 31-54 (in Korean).
  15. Lemley, Mark and Carl Shapiro. 2005. "Probabilistic Patents," Journal of Economic Perspectives, 19(2): 275-298.
  16. Lemley, Mark and Carl Shapiro. 2007. "Patent Hold-Up and Royalty Stacking," Texas Law Review, 85: 1991-2049.
  17. Lemus, Jorge and Emil Temnyalov. 2017. "Patent Privateering, Litigation, and R&D Incentives," The RAND Journal of Economics, 48(4): 1004-1026. https://doi.org/10.1111/1756-2171.12211
  18. Shapiro, Carl. 2010. "Injunctions, Hold-Up, and Patent Royalties," American Law and Economics Review, 12(2): 280-318. https://doi.org/10.1093/aler/ahq014
  19. Shapiro, Carl. 2017. "Property Rules vs. Liability Rules for Patent Infringement," Working Paper.
  20. Sidak, J. Gregory. 2016. "Ongoing Royalties for Patent Infringement," Texas Intellectual Property Law Journal, 24(161): 161-213.
  21. Sim, Kyoungbo. 2018, "A Study on Limiting the Right of Patent Owners to Seek Injunctive Relief for Patent Infringement," Policy Research Series 2018-16, Korea Development Institute. (in Korean)
  22. Sim, Mi-rang. 2013. "Need for New Criteria of an Injunction in a Patent Infringement," Journal of Legislation Research, 44: 571-610 (in Korean).
  23. Son, Hojin. 2011. "A Study on Regulation of Patent Misuse - Focused on the Non-Practicing Entities' Abuse of Request for Injunction against Infringement," Anam Law Review, 34: 823-862 (in Korean).
  24. Song, Jaeseop. 2014. "Limitations on the Exercise of Rights Based on Standard Essential Patent - Focusing on Injunction and Damage Claim," The Justice, 140: 210-249 (in Korean).
  25. The Wall Street Journal. 2006. "RIM to Pay NTP $612.5 Million To Settle BlackBerry Patent Suit," March 4.