• The Journal of Society for e-Business Studies
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• v.23 no.1
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• pp.47-63
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• 2018

This study suggested quantitative models to calculate a royalty rate as an important input factor of the relief from royalty method which has the characteristics of income approach method and market approach method that are generally used in the valuation of intangible assets. This study built a royalty rate regression model by referring to the patent infringement damages cases based on royalties, i.e., by using the royalty rates as a dependent variable and the patent indexes of the corresponding patent right as independent variables. Then, a logistic regression model was constructed by referring to inter-partes review cases of patent rights, i.e. by using not-unpatentable results as a dependent variable and the patent indexes of the corresponding patent right as independent variables. A final royalty rate was calculated by matching the royalty rate from the royalty rate regression model with a not-unpatentable probability from the logistic regression model. The suggested royalty rate was compared with the royalty rate obtained by the traditional methods to check its reliability.

• KDI Journal of Economic Policy
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• v.42 no.2
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• pp.1-30
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• 2020

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.

• The Journal of Information Systems
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• v.27 no.4
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• pp.167-187
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• 2018

Purpose The purpose of this study is to confirm the factors for explaining the consumer behavior when occur patent litigation and technology infringement of each conditions which are brand reputation gap, technology importance and technology leakage attribution based on the Attribution Theory. Design/methodology/approach This study made a design of the research model by 2x2x2 factorial design deducted and performed 3-way ANOVA then analyzed 2-way AVOVA with brand reputation gap as center from technology importance and technology leakage attribution on the basis of the Attribution Theory. Findings According to the empirical analysis result, this study confirmed that consumer attitude has no difference regardless of technology leakage attribution when top-dog vs. under-dog situation and top-dog vs. top-dog situation. Also, this study confirmed that when under-dog infringe important technology, consumer show more positive attitude than the other. On the other hand, top-dog infringe important technology, consumer show more negative attitude than the other.

• Journal of Arbitration Studies
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• v.31 no.3
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• pp.69-89
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• 2021

General lawsuits can be chosen as a method of resolving patent disputes. However, a significant amount of time and money is wasted on litigation until the dispute is resolved. The Intellectual Property Framework Act in Korea requires the government to simplify litigation procedures and improve litigation systems to resolve intellectual property disputes quickly and fairly. As a result, accurate and timely resolution of patent disputes is given importance by the Korean government. Interest in arbitration as an alternative method of dispute resolution is growing. Although dispute resolution through arbitration is effective, the issue of resolving patent disputes through arbitration can lead to the arbitrability of patent disputes. It is therefore necessary to examine arbitrability of patent contracts and validity disputes. Korea has made efforts to reflect the model arbitration law of the United Nations Commission on International Trade Law for quick judicial resolution of patent disputes. Korea has also strengthened related systems for alternative resolutions. However, improving the arbitration system will necessitate a thorough examination of the systems and practices of the United States which is the country in the forefront of intellectual property. This paper examines the arbitrability of Korea's patent dispute and makes recommendations for more efficient dispute resolution system changes.

• Journal of Korea Technology Innovation Society
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• v.20 no.1
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• pp.127-152
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• 2017

China's utility model as a supplement to the invention patent, has short application duration, fast authorized speed, and has the same exclusive rights with patents, so companies can quickly dominate the market. But the utility model does not need to carry out substantive examination, so has lower stability, high frequency of invalid to accepted, so compare with the invention patent, difficult to be protected. In order to actively encourage the small and medium-sized enterprises to promote their inventions, and protect domestic patents, China established a protection policy of patent evaluation report for the utility model rights, especially the patent evaluation report can be used as evidence in a patent infringement trial, to provide judicial remedies for utility model patentee and the party of patent disputes. Many experts believe that the establishment of patent evaluation report system can improve the stability of the utility model patent right, and when the defendant request for invalidation of the patent right in the defense period, if there is no novelty, creativity lost or no other reason has not led to the stability of patent right given in a patent evaluation report of the utility model patents, the court may not suspend the trial, without having to wait for the Patent Reexamination Board makes the patent invalid declaration decisions, can improve the efficiency of the judicial process, accelerate the patentee's time. However, in practical patent infringement, the patent evaluation report system and invalidation system are in conflict. In this paper, through the analysis of the current China utility model system and compared with the South Korean utility model system, review the role and character of the patent evaluation report system, and through the actual cases of the utility model patent infringement litigation, analysis possible variates from the decision of patent evaluation report, to find out the reason of the patent evaluation report system being in conflict with the invalidation system, and research on the effectiveness for protecting Utility Model with China's Patent Evaluation Report.

• Journal of Legislation Research
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• no.44
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• pp.571-610
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• 2013

The current patent system is more often used for defensive purposes to exclude others' use or as a means to hold unfair strong positions in negotiations rather than for the original purpose as the dissemination and active use of useful technology. An injunction together with a damage is an important remedy for patent infringements. However, unlike a claim for damages, injunctions do not require the subjective requirement of intent and negligence or the occurrence of loss. If the validity of the patent and the fact of infringement are confirmed, automatically injunctions are issued without consideration of other circumstances. So a patent holder would exclude others' use and have a powerful position in negotiations because of injunctions for patent infringements. Therefore, those injunctions for patent infringements should be flexibly restricted according to cases under the premise to ensure fair compensation for the patent owner, rather than absolutely admitting injunctions for patent infringements like now. If then, it would serve the use of a useful technology and industrial development as the purpose of the patent system. First of all, judgments for preliminary injunctions should be strict and by deliberate decision on the merits permanent injunctions should be determined. In addition, it is needed that court's discretion possible to considerate 'the need for an injunction'. When the courts judge 'the need for an injunction', 'whether a patent holder has implemented a patent invention, the possibility of monetary compensation and the ability of the infringer for damages, a patent holder's intent to license and whether an injunction has been used as a weapon of negotiation, the proportion of patent technology in the entire products, the characteristics of patent technology and the possibility of patent invalidity, the competitive relationship for market share, the public interests and gains and losses between the parties and so on' should be considered. After these judgements, if 'the need for an injunction' is not approved, a patent owner would be protected by post-monetary compensation. However, because damages are related to illegal conducts in the past, in the case that an injunction is restrained, measures to ensure the legal implementation in the future are needed. It is primarily desirable that reasonable royalty is estimated throughout private negotiations between parties, but if agreement between the parties does not occur, patent owner should be able to claim the royalty for future.

• Journal of Legislation Research
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• no.54
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• pp.303-343
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• 2018

In 2013 a new era for EU patent law system was launched. The creation of the EU patent with unitary effect and the establishment of the Unified Patent Court established a new legal framework on substantive patent protection and patent litigation in Europe. This year the EU Patent Package would become a reality. It includes a regulation on a unitary patent, a regulation on the translation regime and an international Agreement on the Unitary Patent Court. In contrast to the classical European patent, the post-grant life of unitary patent will be governed by the newly created unified patent court and it will have unitary effect. In this article, I highlight the effect of the unitary patent and the jurisdiction of the unified patent court over unitary patents (and 'traditional' patents granted under the EPC that are not opted-out) for actions in relation to patent infringement or to revocation of a European patent and to licences of right. This article explores on the one hand the relation between national patent, the classical European patent and EU patent with unitary effect and on the other hand the relation of unified patent court to the Brussels $I^{bis}$ Regulation. Particular attention is paid to the institutional changes created by the unitary patent package abd the new supplementary forum that enables the UPC to hear disputes involving defendants from third States that relate to an infringement of a European patent and give rise to damage inside as well as outside the Union. Furthermore on the perspective North-east Asia this essay examines the lessons from the experiences of EU patent package.

• 발명특허
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• v.35 no.9
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• pp.28-34
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• 2010

지난 7월 20일, 미국 로스쿨(Franklin Piercie Law Center)의 과정인 PADIAS(Patent Application Drafting and Infringement Strategies)의 1회 수료식이 한국발명진흥회에서 거행되었다. 총 52시간에 걸친 미국 특허 출원 및 소송 전략에 관한 명품강의였다는 것이 참석자들의 중론이다. 이 프로그램 기획자이자 주 강사인 함윤석 변호사와 전화 인터뷰를 했다.

• Journal of Pharmaceutical Investigation
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• v.38 no.3
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• pp.207-215
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• 2008

Drug approval-patent linkage is the practice of linking drug marketing approval to the patent status of the originator's product and not allowing the grant of marketing approval to any third party prior to the expiration of the patent term unless by consent of the patent owner. Article 18.9.5 of Korea-US Free Trade Agreement requires that Korea introduce the linkage system in drug marketing approval. However, Korea is unfamiliar with the linkage system. In addition, there have been lots of arguments over the impacts of this system on Korean pharmaceutical industry and pharmaceutical market in the future. This report investigated the linkage systems of the US and Canada. The US and Canada have implemented drug approval-patent linkage system since 1984 and 1993, respectively. Both countries have patent lists for drug approvalpatent linkage on which originators are required to list patents on substance, product, and use of their drugs. Generic or follow-on drug applicants must contain a certification regarding each patent listed that relates to the referenced drug. If the patent holder files suit for patent infringement within 45 days of notice of application, drug approval is not allowed for several months - 30 months in the US and 24 months in Canada. Both countries have amended their systems after having experienced unexpected results such as listing improper and additional patents, multiple patent litigations and delayed generic entries. After reviewing the US and Canada's experiences, we suggested three principles needed in implementing the system: protecting patent holder's right; promoting generic drug development and marketing; monitoring the process and the effect of the system.

• Journal of Arbitration Studies
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• v.23 no.1
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• pp.153-175
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• 2013

The issue of patent validity becomes a subject of dispute under the FTA and there is a definite difference of opinion between China, Japan, and Korea. In other words, the validity of a judgment on the patent was exclusively under the jurisdiction of the administrative agency at a particular patent office. Thus, the issue arises where there is a potential judgment on patent validity. In this case, the Supreme Court rather than the patent office can offer a judgment from a judicial institution and can make a judgment in the case of a medication. In China, however, the lowest possibility of judgment on patent validity is predicted to occur in judicial institutions. Such a judgment is recognized as the Grand Bench Decision in Korea, and the court can judge the patent validation rather than the patent office. That is just the case in the Kilby case-it is invalid for reasons obvious in Japan. Therefore, there is a substantial difference between the three countries. Especially in Japan, where after the Kilby case, they revised the patent law in 2004 to introduce Article 104-3, placing the judgment of patent validity in the court, even if the "Apparentness"is not requisite. Per this law, infringers can argue for patent invalidity not only the judgment of the patent invalidation but also the infringement lawsuit. From the point of view of Japan, Korea became the judgment of trademark validation by extension and obvious cases can become directly to judge through the Supreme Court about the right that needs to examinations and registrations. In terms of the mediation, it also provides a clue about the judgment of intellectual property validation and expands the scope of the mediation in the future. From now on, in order to have active mediation procedures in the three countries, China, Japan, and Korea would need to unify regulations and application scopes for mediation in the FTA negotiation and to look forward to achieve a vigorous mediation approach.