• Journal of Arbitration Studies
• /
• v.26 no.3
• /
• pp.51-66
• /
• 2016

This paper considers how various types of patent disputes can be more efficiently resolved through arbitration, rather than litigation. For this analysis, it takes three types of patent disputes as a control sample - contractual disputes, infringement disputes and FRAND disputes - and assess how these disputes can be better resolved through arbitration in terms of several criteria, namely, the suitability of the decision-makers, the number of forums in which disputes have to separately decided and enforced, procedural flexibility and confidentiality. The paper takes into consideration that certain types of patent disputes, such as infringement disputes and FRAND disputes are unlikely to be subject to pre-existing arbitration agreements. In these types of disputes, parties may make the decision between arbitration and litigation based on strategic and tactical concerns, rather than legal ones. The paper concludes that, given this limitation, it is not possible to categorically state whether arbitration is more suitable than litigation for resolving patent disputes. The most sensible course to follow in adopting arbitration for patent disputes is for legal advisors to be familiar with the intricate benefits and pitfalls of arbitration in patent disputes, and to actively consider referring a dispute to arbitration over litigation after a dispute has arisen.

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

• Knowledge Management Research
• /
• v.21 no.1
• /
• pp.1-25
• /
• 2020

Although patents have mainly been considered as the results of the invention process, of late their value as strategic assets have increasingly been emphasized. Consequently, the competition for patents among firms has intensified, and the number of patent disputes have been steadily increasing. Patent disputes, which cause enormous expense and resource utilization, increase uncertainty and have been considered as a threat or problem for the firms involved. Patent disputes are expected to have a significant impact on the decision making about subsequent innovation activities. This study attempts to analyze the effect of patent disputes on the subsequent innovative activities of the firms that are sued. After experiencing litigation as defendants, we examine their subsequent patenting strategies. According to the results of the study, firms who are experiencing patent litigation are more likely to achieve high-quality patents and cite recent technology when they apply for patents. Meanwhile, patent litigation experience has been shown to negatively affect the amount of subsequent patents applied. This study increases understanding by examining whether patent disputes, which have been mainly recognized negatively as obstacles, can be an opportunity that comes during a crisis.

• Journal of Arbitration Studies
• /
• v.28 no.3
• /
• pp.21-33
• /
• 2018

Technological innovations can be protected by patents, and patent applications are filed in various patent offices around the world including the United States Patent and Trademark Office (USPTO). Recently, the U.S. exportation of artificial intelligence and internet of things patents in the form of foreign sales of articles embodying U.S. patents and international technology licenses has grown substantially. However, due to the U.S. Supreme Court's Lexmark decision reconfirming an international patent exhaustion doctrine, the asian or korean importers importing such U.S. goods embodying U.S. patents do not have to worry about patent infringement liability, even when they try to resell the patented goods to the third parties. KCAB can play a substantial role in resolving such patent disputes due to qualified expert arbitrators and the International Rules of KCAB which ensure impartiality and independence of the arbitrators.

• Journal of Digital Convergence
• /
• v.13 no.3
• /
• pp.117-125
• /
• 2015

In case that they do not have counterstrategies ready for patent disputes in advance, they would not be able to survive competitions or would fall behind in the market. Most of domestic companies are not equipped with appropriate counterstrategies, and there are only few studies on the countermeasures for patent disputes. Thus, this study examined counterstrategies for patent disputes drawn from cases of smartphone patent disputes and preceding researches, and conducted interviews and surveys with patent experts and company executives to grasp their opinions about the effectiveness of countermeasures for patent disputes related to the smartphone field. As for analysis tool, the Delphi method is selected that is usually used for analyzing relatively a small number of expert opinions. As a result of interviewing patent experts, effective countermeasures turned out to be cross licensing, counter-suit, and patent invalidation suit, in order, and as a result of surveys with company executives, they turned out to be patent invalidation suit, counter-suit, cross licensing, suit through solidarity, and loyalty agreement, in order. It is anticipated that the study results could be used for smartphone manufacturing companies and ICT companies to establish counterstrategies for patent disputes.

• Journal of Arbitration Studies
• /
• v.14 no.2
• /
• pp.199-241
• /
• 2004

This paper discusses to what extent the party autonomy can be allowed in intellectual property dispute resolution agreements in determination of governing law, international jurisdiction, and ADR agreement for arbitration, etc. in considering of the territoriality principle of IP. The party autonomy in choice of governing law and jurisdiction can be fully enjoyed in IP contract disputes. However, the freedom of choice is limited to the disputes regarding IF infringement disputes. The party autonomy is denied in the issues of determination of validity of patent or other IP rights. The author seeks the possibility to allow as much freedom in making choice of applicable law or jurisdiction, or entering into arbitration agreement.

• Transactions of the Korean Society of Automotive Engineers
• /
• v.23 no.3
• /
• pp.315-325
• /
• 2015

Smart Car market has been experiencing continuous growth to drive leading companies in automotive and IT industries to focus on advancing related technologies. As the IT technologies fuse into automotive technologies, the patent litigation has been showing changes. One of the prominent changes in patent litigation pattern of Smart Car field is the increased activities of the Non-Practicing Entities (NPEs), whose main field has been the IT area. However, the automotive companies have been mainly focusing on preventing patent disputes against competitors through trend analysis, which caused them to become relatively vulnerable to the attacks from NPEs. In this study, we developed a methodology for monitoring and analyzing the activities of NPEs using network analysis tools to suggest effective strategies for manufacturing companies to fortify their ability to respond against unanticipated attacks. Our methodology, which is developed for the Smart Car field, can also be useful for other fields such as IT and electronics.

• Journal of Arbitration Studies
• /
• v.26 no.3
• /
• pp.121-147
• /
• 2016

Factual issues in most patent litigation are related to very complicated techniques. Thus, the courts has emphasised that the technology in dispute has to be read and understood through the eyes of a person to whom it is directed. Therefore, among the various processes in federal litigation, most litigation in the field of patent infringement relies on at least some expert evidence. This paper focuses on issues regarding patent dispute evidence, and explore whether there are unresolved issues in evidential rules and procedures of patent proceedings. Further, this paper seeks to demonstrate that both the parties and the courts in patent disputes generally benefit from the current evidence system. However, in a number of Australian cases, the scope of expert evidence in patent cases has been strictly limited. Australian Government identified uncertain issues associated with the present patent enforcement system, due to factors such as a low level of knowledge about what patent rights entail, the high degree of uncertainty of outcome in legal proceedings, etc. Arbitration shall be reviewed and suggested as an alternative to tackling the ongoing problems in the trial system.

• International Commerce and Information Review
• /
• v.6 no.1
• /
• pp.249-265
• /
• 2004

In the current digital age, most of the countries in the world recognize the electronic business to be a very prospective area in the future and plan to activate for the preoccupation of the business. As a result, this led a rapid increase of the electronic business volume. Electronic business takes place in the cyber space, using internet. However, the intellectual property rights have a high degree of possibility of being infringed as the digitalized intellectual property is easy to receive, copy and transmit in the cyber space. The language structure on the web, represented by HTML, makes easier to copy the intellectual property. And, as the internet has no national boundary, the infringement of the intellectual property rights is easier regardless of country, which could lead to the commercial disputes between the concerned countries. There are in fact many legal disputes nowadays on the infringement of the intellectual property rights in such field as computer programming, infringement of the copyright, business model patent and infringement of the trademark right on the registered name of the domain. It is, therefore, time now to prepare a new theory or legal system to protect the intellectual property rights on copyright, patent and trademark right so as to comply with the digital environment together with such a splendid growth of "electronic business." USA and Germany are nowadays making a significant movement on the legislation of the electronic business, and this study will focus on the legislative contents, judicial precedents and interpretation of law in the above countries.

• Polymer Science and Technology
• /
• v.10 no.4
• /
• pp.493-499
• /
• 1999