In the past, copyrighted works were distributed exclusively through physical means, while copyright law developed to bestow copyright holder a privilege to decide when and under what circumstances a work should be put into circulation. The first sale doctrine, however, limited that ability in so far as, once a product is sold, copyright owners can no longer control the flow of that particular product, benefiting consumers and society in several ways. Today, as distribution is increasingly shifting into digital, the application of the first sale doctrine is challenged. This work provides for an analysis of the first sale doctrine under EU law and the ECJ case law in matters of digital exhaustion. It is shown that many of the benefits of first sale stem from traditional understandings of what means to own a physical copy and when it comes to the digital environment, the first sale doctrine seems to be undermined, and so do its benefits. It is argued that there is still some room for exhaustion, despite the lack of clarity of the wording of the InfoSoc Directive and Software Directive and the absence from the ECJ to provide for a final interpretation. Further to the analysis, it is shown that the promotion of a right to access and a right to transfer digital copies is still possible, even though they may not be the right answer to the issue of exhaustion in a digital economy by virtue of how market has developed and consumers response to it.

自從美國最高法院在廣達與LGE案中作出解釋後，便將權利耗盡理論亦稱為第一次銷售理論帶往另一個層次。此案已被普遍認為對於美國過去的判例影響甚鉅，對於產業界的商業活動發展更是具有深遠的影響。智慧財產權旨在保護發明及創造公眾利益間取得一平衡點，權利耗盡理論長久以來已被視為專利法中重要的一環，並藉以杜絕專利權人的過當控制。而最高法院對於第一次銷售理論的解釋，則進而撼動專利權人長此以往對限制性銷售策略的仰賴。 即便銷售後限制(Post-sale restriction)確實提供了專利權人避免耗盡其權利的好方法，但專利權範圍則限縮了專利權人所享有的權利控制範圍，換言之，專利權人僅能擁有專利法所賦予的權利，且其加諸於被授權人的購買條件限制僅限於該專利之功能及使用目的。而超越該專利功能及使用目的的過分限制，則可能導致專利權濫用。而在開放WTO框架下，國際貿易的頻繁也使得權利耗盡衍生出了在散佈等方面的相關討論，平行輸入/輸出的議題亦隨著跨國交易的興盛而隨之重要。 故此篇論文的研究目的不僅僅探討權利耗盡理論及其相關議題，更旨在藉由廣達案的啟發，提供台灣的IT產業一有效的專利授權策略，並提供不論專利權人或被授權人於制定授權契約時，能有一更具有策略性的思考方向。 / The Supreme Court’s current decision in Quanta Computer, Inc. v. LG Electronics, Inc. brings the exhaustion doctrine also known as first sale doctrine up to a new phase. This case is believed significantly overcome quite a lot of past precedents and will effectively influent industry business operations in the future. The core goal of intellectual property right aims to find a balance between protecting the incentives to create and innovate, and providing the benefits to public interests. Exhaustion doctrine has been long standing as part of patent law to prevent patentees’ over control. The interpretation made by Supreme Court regarding the first sale doctrine does vibrate the conditional sale strategies long believed by patentees. Now the Supreme Court brings the issue from the phase of patent law down to the contract law level. Subsequently, the litigations of antitrust and fair trade are therefore involved while patentees are tempting to make an “end-run” control over the downstream purchasers. Though applying post-sale restriction provides a way out for intellectual property owner from triggering the exhaustion, however, the scope of the patent claims determine how far the privilege is given to the inventors. A patent owner or licenser can only enforce its patent right while the right is truly granted by the patent law. Subsequently, the restriction set forth to limit the licensees or purchasers must be accordance with the function or feature of the patent claims for. On the contrary, the patentee intends to restrict its purchasers by holding the exclusive right which beyond the scope of the patent granted may result to patent misuse, for instance, the resale price maintenance, prohibition of manufacturing the competing products, the conditional license which incorporates another license, and overwhelming royalties on the price of the whole product instead of the actual usage of the patented article. Under WTO, the concern of intellectual property protection has become more critical in the perspective of international trade, different issues and disputes regarding exhaustion have also been generated. Not alike the traditional domestic exhaustion, the discussion regarding distribution has therefore been derived. Moreover, the issues related to parallel import/export are generated in accordance with the frequent cross-border transaction. The purpose of this research does not merely lead us look into the doctrine and restriction patentees used to impose for avoiding exhaustion. But I intend to further illustrate a guideline based on the inspiration from Quanta and the explanation of the Courts. This guideline should provide both patentees and licensees an orientation while considering making a licensing agreement.