FRAND선언 표준필수특허와 관련된 권리행사와 국제사법

SEP Infringement encumbered by FRAND licensing terms and Private International Law

Recently industry standards are inevitable especially in the information and communication technology industries, which are often developed by Standard Setting Organizations (SSOs) such as IEEE and ETSI. An industry standard discloses common technology for a particular product or process in order to be more functional and marketable to costumers. If a patented invention is deemed by the SSO to be essential to an industry standard, that patent deemed to be a Standard Essential Patents (SEP), the owner of the SEP is obliged to declare their intention to license it to all other members of the SSO on certain licensing terms. These licensing terms is FRAND (Fair, Reasonable and Non Discriminatory). With regard to the SEP encumbered by FRAND terms, Disputes arise concerning the extent to which an injunctive relief for SEP holder can be available. Also, the legal effect of the FRAND declaration on the third party (licensee) should be determined to resolve those disputes. This article focuses on the private international law issues on SEP Infringement encumbered by FRAND licensing terms such as applicable law to the legal effect of the FRAND declaration and multijurisdictional litigation issues often shown in the SEP infringement cases, examining Samsung v. Apple cases occurred in 11 jurisdictions from 2011. For the applicable law, the law applicable to the contract between SEP holder and SSO and the law applicable to the relationship between SEP holder and the third party (willing or unwilling licensee) should be considered separately. The legal effect of the FRAND declaration on the third party should be governed by the law applicable to patent infringement act, not contract law between SEP holder and SSO. And for the regulation of multijurisdictional litigation, reflecting model rules shown in the Principles on Choice of law rules in IP, much more discussion should be necessary to regulate related issues on multijurisdictional IP litigation at a global level without any influence of the territoriality principle of IP.