A Study on Proposed Measures to Patent Misuse －Focus on Patent Assertion Entities and New Defensive Strategies
Date Issued
2016
Date
2016
Author(s)
Lee, Yi-Hsin
Abstract
This thesis focuses on the flourishing of Non-Practicing Entities in the U.S., as well as its position in patent market and opinions of scholars, then observes institutions reform with regard to patent law in responses to NPE issues in the U.S. Also, this thesis further explores patent law issues in Taiwan. In addition, this thesis introduces traditional tactics which enterprises have adopting and new tactics rising recently and relevant issues. First, this thesis introduces the role that NPE plays in patent market based on scholars, and analyzes the reason why Patent Assertion Entities who misuse patent right have been prevailing through the aspects of legal institution and market. With regard to legal institution, the design of patent application examination procedure cannot deal with exploding patent application well, while litigation institutions have created relatively friendly surroundings for patent holders. On the other hand, with regard to market aspect, the development of internet, the complex high-tech products and the operation modes of PAE which spend less cost and gain high profit have also created better surroundings for PAE. Second, this thesis introduces acts raised by congress related to patent law in order to balance the protection to patent holder and encouraging technics using by public. Leading by America Invents Act, which has reformed some basic rules in patent system, congress has then raised a lot of amendment acts. The issues of those amendment acts meant to deal with are as follow: regulations to warning letter, restrictions to discovery procedure, switching litigation fees and transparency of patent ownership. Apart from acts raised by congress, government organizations and courts have also created specific standards in respect to injunctions orders. Preceding reforms have corrected patent regulations into a balance between patent holder and practicing entities. In comparison to the U.S. patent law, there have been criticisms pointing out that patent law in Taiwan has overly suppressed patent holders in exercising their rights, which may have some negative influences in innovations. With regard to the problems encountered by Taiwan, This thesis discusses following issues: utility model patent and relevant issues, regulations for warning letter, adopting U.S. discovery procedure and registration antagonism in patent registration. Although the issues in Taiwan are different with those in the U.S., the way to solve those problems are the same, that is, regulations reform should focus on balancing protections to patent holder and encouraging technics using by public. After the discussion of institution reform, this thesis turns to another direction exploring tactics that enterprises have adopted in responses to PAE issues. First, this thesis introduces traditional tactics, including developing patent database, creating patent monitor system, and finding professional to manage tactics. If the enterprise lack of resources, it can take out patent litigation insurance. On the other hand, the basic defense tactics used in litigation, including patent invalidity claim, non-infringement claim, and patent misuse claim, are what all enterprises should knowing well. Recently, apart from preceding traditional defense tactics, there has been a newly developed defense tactic, Defensive Patent Aggregation. This thesis introduces the origin of the concept and development, and then analyzes the organization and operation mode of DPA based on three unique organizations, RPX, AST, and LOT Network. This thesis further discusses relevant issues with regard to antitrust law as some agreements between DPA and its members may have anticompetitive effects to the market. For this issue, this thesis introduces the antitrust lawsuit between DPA and PAE and analyzes the issues within the case. Although anticompetitive concerns may occur in the operation of DPA, it still brings the opportunities for enterprises in lowering patent litigation risk. In addition, it is helpful in promoting industries development and market competition. Finally, this thesis concludes preceding researches in the last chapter, and analyzes the tactics for enterprises when confront PAE issues as tactic advices for enterprises in Taiwan when encounter similar issues.
Subjects
NPE
PAE
Defensive Patent Aggregation
Injunction
Antitrust
Type
thesis