신종 플루 등 대유행 전염병에 대비하기 위한 강제실시 제도의 개선방안

Improvement Measures on Compulsory Licensing Jurisprudence to Cope with Pandemic Infectious Diseases, such as Influenza A(H1N1)

The outbreak of new influenza A(H1N1) in 2009 has heightened possibility of compulsory licensing higher than ever before in Korea. To help relevant persons including the Commissioner of the Korean Intellectual Property Office (KIPO), who has authority to decide the licensing, this paper studies: (1) basic concept of (compulsory) licensing, (2) jurisprudence based on the international treaty, TRIPS, (3) provisions and precedents of compulsory licenses both in major foreign countries and in Korea. Based on such study, this paper suggests more flexible attitude on compulsory licensing because: (1) many developed countries have taken flexible attitude on it, especially in the U.S.A. the door for compulsory licensing has been opened wider by the eBay v. MercExchange case, (2) the TRIPS agreement allows a flexible and independent decision by each country, (3) even under the compulsory licensing, relevant damages could be compensated by adequate remuneration, (4) a compulsory license is not much different from a willful infringement, where one methodology of damage calculation is similar to that in an infringement case, and (5) limitation of patent right through compulsory licensing is similar to that of other property rights, which we have accepted as an inevitable one. Furthermore, this paper points out some defects or loopholes of current compulsory licensing system, prescribed in articles 106 and 107 of the Korea Patent Act and in addition relevant improvement measures or provision amendment measures as follows: (1) the taking system and government-initiated compulsory license system must not be prescribed in one provision, now article 106, (2) “emergency” should not be a precondition to decide a compulsory license, (3) “commercial use” through compulsory licensing must be easier than now, (4) “just compensation” for takings must be conceptually differentiated by “adequate remuneration” for compulsory licenses, (5) KIPO is encouraged to gather more data on royalty rates, (6) KIPO shall prepared for termination of the compulsory license at issue, (7) a “general” compulsory license system could be introduced to Korea, through which more flexible compulsory licenses might be possible. Even after making the compulsory license system more flexible than now, KIPO must still be very prudent to limit a patent right by allowing a compulsory license. Not recklessly over-using it, KIPO may exploit the system as a lubricating tool, which may enhance possibility of a negotiation and agreement among interested persons, such as a patent owner, a willing licensee and KIPO.