| Summary: | 碩士 === 國立中正大學 === 財法所 === 98 === Under the common law system and contract equity doctrine, patent licensee
shouldn’t be allowed to challenge the patent validity due to the license agreement.
Patent holder (licensor) can avoid patent validity lawsuit because of the doctrine of
licensee estoppel. However, the doctrine of licensee estoppel had been overruled by
two U.S. Supreme Court cases---Lear (1969) and MedImmune (2007). U.S. Supreme
Court held that the licensee was entitled to file the action for declaratory judgment
against the licensor because he was who may usually be the most proper one to
discover the patent’s invalidity and give the technology back to the public domain.
Therefore, the doctrine of licensee estoppels under common law should be applied
in a narrow way, in order to cater the spirit of patent law and federal policy.
In Taiwan, the Intellectual Property Office (IPO) opined that the good-standing
patent licensee should stay away from patent validity dispute. That is to say, the
no-contest clause, which will deprive the right of licensee to bring suit against the
invalid patent, will be enforceable even though the Article 54 of Patent Act allowed
any person to file an invalidation action. Under this circumstance, it will result in
failing to eliminate any underlying invalid patent whenever there’s a patent license
agreement between licensor and licensee.
In the author’s point of view, in the condition of the idea “the worthless patent
should belong to public domain”, the no-contest clause shouldn’t be permissible and
will be deemed unenforceable or inoperative. No one shall be deprived the right to
challenge the validity of a patent, patent licensor need to pay more effort during the
negotiation progress of the license agreement, in order to reduce the motivation for
licensee to file the declaratory judgment. Patentee can turn to other license clauses
instead of no-contest clause (inform clause, forum selection clause, arbitration clause
for example), seeking for the balance. Besides, it’s necessary to amend article 60 of
patent act, adding “no-contest clause will be deemed invalid in the license
agreement” into the regulation, so as to reach the goal of patent system as
encouraging, protecting and utilizing inventions and creations to promote the
development of industries.
According to Article 29 of Intellectual Property Case Adjudication Rules, the court
shall overrule any independent action, any concurrent claim or any counter-claim
with respect to the disputed issue over the validity of an intellectual property right or
over whether an intellectual property right shall be cancelled or revoked. To avoid
the restrictions, licensee can change the rights or obligations of the claim, claiming
that the whole license agreement was absolutely invalid due to the invalid patent, so
the court shouldn’t overrule such action in this case and the dispute of the patent
can be resolved properly.
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