以美國法之全部實質權利原則為借鏡檢視我國專利專屬授權法制

Abstract

對於專利專屬授權，吾人向來認為專屬被授權人必得以自己名義提起侵權訴訟。然而，新近美國學說與實務見解顯示，專利專屬授權契約倘未將專利之「全部實質權利」（all substantial rights）移轉予被授權人，則專屬被授權人依然欠缺單獨起訴之權。本文對美國聯邦巡迴上訴法院之判決進行研究，分析歸納出確保專屬被授權人訴訟實施權之關鍵條款與應避免條款，希冀能作為學術界與實務界之參考。本文並藉此反思我國法，經由比較法研究並參酌著作權法之立法後，謹提出二點建議：(一)專利法中宜針對專屬授權進一步定義，規範構成專利專屬授權之關鍵條款與應避免條款，且規範上最好能與國際接軌；(二)宜修法明定當專屬被授權人取得訴訟實施權時，專利權人不得單獨起訴，若欲起訴僅能參與被授權人所提訴訟作為共同原告。

It`s a well-accepted concept that the exclusive patent licensees have the standing to sue for patent infringement independently without joining the patentees. However, the recent academic and prudential opinions in the U.S. stated that an exclusive licensee lacks standing to bring suit if the licensing agreement does not transfer the patent`s all substantial rights. In this study, it is argued that the said opinions in the U.S. can be explained by the ＂act of disposition＂ of the exclusive agreement and yet it is difficult to identify what all substantial rights are. An empirical study on the recent judgments of U.S Supreme Court and Federal Circuit is therefore conducted, finding that while the standing issue derived from patent transactions was considered case by case, no general rule was established by the courts. On the ground of the empirical study, the necessary and prohibitive provisions of the patent exclusive agreements to ensure the transfer of all substantial rights are analyzed and concluded. In addition, the recent academic and prudential opinions in the U.S. are also applied to review the Taiwan`s Patent Law, revealing that its provisions relating to patent exclusive license are not complete and precise enough. After conducting a comparative study, two aspects of a patent law amendment are proposed as follows: (1) the patent exclusive license should be well-defined in the Patent Law, including the necessary and prohibitive provisions of the patent exclusive agreements to ensure the transfer of all substantial rights; and (2) the patentee should have no more standing to sue for infringement independently if the exclusive licensee has obtained the standing to sue independently. The patentee, however, could still bring sue by joining the exclusive licensee.