Welcome to the Essential Patent Blog!  This blog was started in response to increased interest surrounding standard-essential patents (SEPs) – particularly in patent infringement litigation.  Historically, most SEP issues were relegated to theoretical discussions in academic literature or conference presentations.  But that’s changing.  Many in industry, the media, the legal world – and even Congress and administrative agencies – have begun to pay more attention to SEP issues.  Several of the excellent patent-related blogs have had SEP posts, but there was no blog focused primarily on the myriad legal issues and disputes surrounding SEPs.  Our aim is to be that one-stop shop for all SEP legal matters.

Whether we realize it or not, we encounter standards every day.  These range from the mundane (such as driving on the right-hand side of the road, or all traffic lights containing the colors red, yellow, and green) to the highly technical (high-definition television broadcasting or cellular communications protocols) and the relatively obscure (testing methods for measurement of electrical properties of carbon nanotubes).  Standards are often developed or established to overcome barriers in the adoption of a particular technology or method of doing things.  When standards are promulgated properly, they promote interoperability and compatibility and allow use of the standard to proliferate.

Standards are commonly promulgated by Standard-Setting or Standards Development Organizations (SSOs or SDOs), where industry participants and stakeholders work together to set the governing terms of a standard.  Typically, the goal of these SSOs is to produce the best standard that will be adopted by the largest number of implementers.  Sometimes areas of the standard may be covered by existing patents.  These patents are known as standard-essential patents, or SEPs.  Many SSOs include patent policies within their bylaws to govern the practices and procedures by which patented technology may be included within the standard.  Often patent holders are asked to expressly disclose or identify SEPs prior to the approval of a standard.  Even if patent holders need not identify SEPs, they may be asked to disclose whether they will agree to license any SEPs they own on a royalty-free basis or on reasonable and non-discriminatory (RAND) terms.

Ongoing and recent disputes related to SEPs have raised (and sometimes attempt to answer) many interesting questions, such as:

  • Is a RAND licensing commitment an enforceable contract?  If so, who are the parties to the contract?  Can a breach of that contract be enforced by third parties?
  • Can a patent holder violate a RAND commitment simply by offering unacceptable licensing terms to another?  Does this conduct possibly breach a contract, constitute patent misuse, violate the antitrust laws, or even violate the civil RICO statute?
  • Is there a proper method or formula for determining RAND terms for a particular set of SEPs, and if so, what is it?
  • If two parties have a dispute over the meaning of RAND terms for a set of SEPs, what is the proper forum for resolving that dispute?
  • Does the existence of a RAND licensing commitment precludes a patent holder from seeking injunctive relief in the district courts or an exclusion order at the U.S. International Trade Commission?
  • What is the proper scope of a patent holder’s duty to disclose essential patents?  Does this include pending patent applications?
  • What are the proper remedies if a patent holder has been found to violate its RAND licensing commitment or duty of disclosure?

In addition to SEP issues, we may occasionally prepare posts on other patent issues such as recent Federal Circuit or Supreme Court decisions impacting patents.

We hope that you will find the information on the Essential Patent Blog useful and informative, and we welcome any comments or feedback that you may have.