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Study On The Legal Issues Arising From Patent Incorporation Into Technical Standard Under WTO

Posted on:2009-12-30Degree:DoctorType:Dissertation
Country:ChinaCandidate:C C XuFull Text:PDF
GTID:1116360242487882Subject:International law
Abstract/Summary:PDF Full Text Request
This article studies the legal issues arising from patent incorporation into technical standard. Introduction puts forward problems. Chapter 1 analyses how the problems arise from. Chapter 2– 4 analyses the problems and its solution methods from the perspectives of Patent Policy of Standard Setting Organizations(SSO),Patent Law and Antitrust Law. Conclusion puts forward the methods to solve the problems according to China's situations and existing problems.Introduction puts forward the problems, the status quo of solving problems and the research purport. By enquiring and reflecting the event that China presents a proposal named INTELLECTUAL PROPERTY RIGHT (IPR) ISSUES IN STANDARDIZATION to WTO Committee on Technical Barriers to Trade and has no result,this article take the legal issues arising from patent incorporation into technical standard as the object of this study. Patent incorporation into technical standard may lead to Standard Hold-up Problem and Competition-bloching Problem The problems appear in the form of non-disclosure of patent information, patent pool, refusal to license, excessive pricing on license. The Problem behaves a new kind of barrier to trade in international trade. This article puts forward three methods to solve the problems, including the SSO's patent policy, Patent Law and Antitrust law,and analyses their merits and demerits. During practicing the domestic technical standard, adopting international standard and observe foreig(nIncluding area standard)technical standard,China is facing the legal issues arising from patent incorporation into technical standard. China's patent policy and law relating to standardization, Patent Law and Antitrust Law have some loopholes,and it is difficulty to solve the problems,so it is necessary to perfect relevant laws Therefore, this study has very important values in theory and practice.Chapter 1 deals with the basic theory of patent incorporation into technical standard. There are 5 sections. Section 1 deals with the definition, classification, purpose, and nature of technical standard. Technical standard has different meaning in the different circumstances, so it is vital to ascertain the given context to understand it. Technical standard may be classified from different angle and their legal meanings are not the same. This article ascertains the studied technical standard via these classifications. The purpose of Technical standard explains why need technical standard, and this article analyses why need compatibility standard, security standard, and environment standard from the Network Externality, Information Asymmetry and External Effect of Production. The public goods attribute of technical standard in Economics governs its public property rights in law. Section 2 deals with the WTO member's obligation to technical standard. According to TBT,during setting up technical regulations and Technical standard, WTO members have compulsory obligation to adopt International Standard or take International Standard as basis. WTO member can deviate from International Standard and set up domestic technical regulations and technical standard only from security, health, and environment considerations and legal procedures According to TBT, this article interprets the dispute over setting up WLAN International Standard between China and America. Section 3 deals with the classification, granting conditions, characteristics; and nature of patent. Most countries grants patent according to first-to-applying rule. But US patent law grants patent according to first- to–invention rule and this facilitates patent incorporation into technical standard in standardization setting context. The characteristics of patent is that patent owner gets monopoly power over practicing new technology scheme at the expense of publishing new technology scheme. Patent right is a kind of private rights. Section 4 deals with how patent incorporates into technical standard. This section analyses four reasons why patent could incorporated into Technical standard. The patent incorporating into technical standard mainly is method patent and it is essential to technical standard. The patent owner usually is the proposer of technical standard,and may be someone else. The time of patent incorporation into technical standard varies from granting rule. Under first-to-applying rule, the disclosure time cannot be too earlier, or it will lose the novelty. Under first–to-invention rule, the disclosure time may be lagged. Section 5 deals with the legal issues arising from patent incorporating into technical standard. patent incorporation into technical standard may result standard Hold-up Problem and competition-blocking problem. Hold-up problems means that after SSO member choses standard,he finds that adopting the standard infringes a certain patent, or that patent owner have known that SSO has chosen its patent as priority,he can get higher licensing fee than he can get where SSO has not confer market power or other facilitation before the standard set up, so this blocks the adoption of technical standard. Competition-blocking problem means that once patent incorporates into technical standard, because the technical standard has the effect of enhancing practicing patent,some proposers of technical standard take actions as non-disclosure of patent information, patent pool, refusal to license, excessive pricing on license,produces monopoly or attempt to produce monopoly,or leads to other hazard,hence makes damages to competition and eliminates consumer's welfare. These problems appear as a new kind of barrier to trade in international trade. Finally, this section analyses the four reasons why the problems arise from patent incorporation into technical standard.Chapter 2 deals with how regulates the legal issues arising from patent incorporation into technical standard by SSO patent policy. There are 3 sections. Section 1 deals with the contents of SSO patent policy. It contains that permitting essential patent incorporate into technical standard;Ex-ante disclosure;free royalty or royalty on reasonable and non-discrimination(FRAND);Patent owner has no duty to search patent; neutrality standing of SSO. Section 2 deals with the legal force of SSO patent policy. SSO bylaw is the legal basis on which SSO exists and operates. Besides binding the members, when patent owner make FRAND promise to SSO,it produces a third beneficiary. Most countries law empowers the third beneficiary a legal claim. In case of SSO member tactic exit, SSO member shall undertake on-going obligations. Section 3 deals with the applying and developing the patent policy of SSO in practice. In the case of patent owner's breach Ex -ante disclosure rule,it is proper to apply Estopple by Conduct principle. The adopter of technical standard also makes fraudulent defense, but the requirements is relatively higher. If the proposer of technical standard makes FRAND promise,it constitutes implied license to the adopter. Section 4 makes a review on SSO patent policy. SSO patent policy resolves partially standard hold-up problem and competition-blocking problem. It has good effects, but it also has some shortcomings.Chapter 3 deals with how regulates the legal issues arising from patent incorporation into technical standard by Patent Law. There are 3 Sections. Section 1 deals with the theory and practice of patent misuse. Patent misuse is affirmative defense against patent infringement. According to the defense of patent misuse,if patent owner's exercising its rights breaches public interest, he cannot ask the court safeguard its rights. U.S. Patent Law provides patent misuse. There are two elements of patent misuse. First, there exists patent or being related to exercising patent; Second, exercising patent does harm to others or public interests. The consequence of patent misuse is that the court does not support the patent owner's claims for exercising his rights and applying for injunction before the misuse act is adjusted. There are some differences between patent misuse and antitrust law, and they are coming into being , function, nature and legal consequence. Section 2 deals with how patent misuse regulates the legal issues arising from patent incorporation into technical standard. Patent misuse may solve the legal issues arising from patent incorporation into technical standard, such as non-disclosure of patent information, license fee discrimination, patent pool and so on. Applying patent misuse to regulate the legal issues arising from patent incorporation into technical standard has merits and demerits. Section 3 deals with how compulsory license regulates the legal issues arising from patent incorporation into technical standard. TRIPS provides the legal reasons and procedures of compulsory license. According to the conditions of patent compulsory license provided in TRIPS, when technical standard patent owner's act constitutes restrictive competition, compulsory license may apply; on the other hand,even if the patent owner's act does not constitutes restrictive competition,but the prospective adopter of technical standard attempts to get license from patent owner in accordance with reasonable commercial terms but does not succeed in reasonable time, he can also apply compulsory license.Chapter 4 deals with how regulates the legal issues arising from Patent incorporation into technical standard by antitrust law. There are 5 Sections. Section 1 introduces the basic theory of antitrust law from the regulating object and legislative mode of competition law, monopolization act regulated by antitrust law , reasonable rule and per se rule, extraterritorial effect , analytical mode, liability. Section 2 deals with how regulates the patent's exercising by antitrust law. The relationship between antitrust law and intellectual property law is close. First, they have both the same legislative purposes; Second, exercising intellectual property rights properly is immunized by antitrust law; Third, the misuse of intellectual property rights shall be regulated by antitrust law. U.S. and European Union lay down antitrust regulations to regulate the exercising of intellectual property rights. Section 3, taking Dell case, Unocal case and Rambus case as examples,deals with how regulates non-disclosure of patent information in technical standard by antitrust law,and analyses the basis and nature of liability. Proving the non-disclosure of patent information in technical standard to constitute monopoly or attempt to monopoly, it shall establish that: First, the proposer of technical standard misrepresents; Second, he get market power by technical standard; Third, he has intent to monopoly. Section 4 deals with how regulates patent pool in technical standard by antitrust law. By contrasting 3 cases, this section summing up the criteria whether the patent pool in Technical standard violates Antitrust Law. First, whether the incorporation patents is complementary or not; Second, whether permit the incorporation patents license alone or not, Third, whether permit the competition with the patent and standard; Fourth, whether exist price-fixing or price manipulation. Section 5 deals with how regulates the refusal to licensing patent in technical standard by antitrust law. Antitrust law of U.S. and European Union apply essential facilities doctrine to solve the problem of refusal to deal,and the doctrine's applying extends to refusal to deal of intellectual property rights in recent years. It is necessary and possible to apply the doctrine to solve patent owner's refusal to license in technical standard. Section 6 deals with how regulates excessive pricing on license in technical standard by antitrust law. Most antitrust law takes excessive prices as a kind of monopoly and regulates it, but judicial practice indicates that it is not easy to decide excessive price. Hence, Ex-ante license will be a alternative method.Conclusion entitled perfecting and applying legal systems to resolve the legal issue arising from patent incorporation into technical standard. According to China's facing standard hold-up problem and competition-blocking problem arising from patent incorporation into technical standard during practicing domestic technical standard, adopting international standard and observing foreign(including area standard)technical standard, based on the foresaid analytical conclusions, puts forward the methods to solve problems. There are 3 Sections. Section 1 deals with China should perfect standardization administrative system, patent policy and the practicing of TBT. Our administration—orientated standardization system exists some inadequacy,it should be perfected according to the mode of"national standardization administrative agency(setting up national standard)—SSO(setting up industry standard)-enterprise(the proposer of technical standard)". The rules on national standard related to patent (draft) drawn up by Standardization Administration Committee (SAC) of P.R.C. exists inadequacy, it should be perfected. China should adopt international standard according to the given order during practicing TBT. During observing foreign (including area standard) technical standard, if WTO member violates TBT,China government can bring a complaint to WTO Dispute Settling Body. Section 2 deals with China should perfect and apply patent law. Article 75"Technical standard and patent infringement"of The rules on trial of patent infringement (draft) made by the Supreme Court of the People's Republic of China exists inadequacy, and it need perfecting. China should establish patent misuse system according to the coexistence mode of patent misuse and antitrust law. China's compulsory patent license has some gaps in contrast with TRIPS,it should be perfected according to TRIPS. Section 3 deals with the perfecting and applying china's antitrust rules for intellectual property. China's antitrust law should be perfected from evaluating rule, the definition of relevant market, antitrust executing agency, antitrust executing work system, antitrust law liability, antitrust law private litigation, the extraterritorial effect of antitrust law. China should perfect antitrust rule for intellectual property by referring U.S. Antitrust Guidelines for the Licensing of Intellectual Property. It should provide the relationship between intellectual property law and antitrust law, the basic principle of intellectual property's antitrust analysis, evaluating rule, safe zone, prohibiting patent owner's restrictive competition via standard setting in general provisions; and it should provide the elements of pro-competition and anti-competition of each act of practicing intellectual property rights as guideline for antitrust analysis.in sub-provisions Eventually, according to the basic theory of antitrust law, this section make a summery on how to deal with China's facing restrictive competition problems China which arises from patent incorporation into technical standard.
Keywords/Search Tags:TBT, Technical Standard, Patent Incorporation
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