T.A. Hendricks and M.L. Oliverio (USA)
Patent Law, Standards Setting Organizations, Disclosure Policies, and Patent Searches.
Standards Setting Organizations (SSOs) generally require disclosure from participants of any patent(s) that could be essential to a developing standard and licensing on royalty-free (RF) or reasonable and non-discriminatory (RAND) terms. Patent holders attempting to assert a patent after failing to disclose it, either intentionally or negligently, have faced a court’s refusal to enforce the patent, mandated licensing, and/or conviction for fraud. Because the SSOs have no enforcement power of their own, courts are left to create remedies for nondisclosure based on theories of patent misuse, attempted monopolization, unfair competition, and equitable estoppel. The result is that many potential participants now hesitate to even join an SSO. After identifying the legal implications and entanglements from SSO disclosure policies, the paper describes in detail how an SSO patent-search policy could eliminate the risks for participants, thus leading to greater participation. It points to the benefits of a patent-search policy such as timeliness, thoroughness, and flexibility. Under a new rule, by which most U.S. applications are now published, the ability to find relevant applications is greatly enhanced. Relying on a range of sources, including advocates of the current policy and critics of patented standards in general, the paper synthesizes current issues surrounding SSOs patent disclosure policies and identifies a solution that helps resolve a number of the major problems.
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