The National Academy of Sciences has published a 140-page report entitled “Patent Challenges for Standard-Setting in the Global Economy: Lessons from Information and Communication Technology.” The report presents several suggestions to standard setting organizations (SSOs) or government bodies regarding standard essential patents (SEPs) in a few topic areas:
- Interpretation of FRAND: Suggests that SSOs clarify FRAND obligation, such as guidance on royalty, intended third-party beneficiaries, bundling SEPs in a portfolio, and license grant back provisions.
- Patent Disclosures: Suggests that SSOs adopt IPR policies that require participants to disclose SEPs and to make such disclosures publicly available.
- Transfer of FRAND Encumbered Patents: Suggests that SSOs and governmental bodies develop policies or rulings that require FRAND obligations to follow SEPs when transferred, including transfers in bankruptcy.
- Transparency of Patent Ownership: Suggests requiring all patent ownership transfers to be recorded in the Patent Office and identify the real party in interest.
- Injunctive Relief for FRAND Encumbered Patents: Suggests that SSOs clarify availability of injunctive relief–such as when prospective licensee does not accept independent adjudication of FRAND or there is no other recourse to SEP holder–but could not reach unanimous agreement on the scope of any limits on injunctive relief.
- Sharing Information Between SSOs and Patent Offices: Suggests that SSOs share draft/final standards with patent offices for prior art databases and that patent offices provide SSOs with current information on issued patent claims and pending applications, such as in existing information sharing agreements between the European Patent Office and three SSOs (ITU, ETSI and IEEE).
- Standards in China, India and Brazil: Suggests that U.S. government entities take steps to educate, monitor and report on SEP development in these emerging economies.
Some of these topics are more controversial than others. For example, limiting injunctive relief until after a judicial determination of RAND mirrors provisions in the FTC’s Consent Decree with Google/Motorola, which had mixed reactions. Some also have questioned whether recording all patent ownership transfers is justified by the associated costs and burdens. And SSOs have resisted proscribing RAND license terms in deference to bilateral negotiations that allow individual parties to define licensing terms that fit their particular circumstances, including their chosen balance of monetary and non-monetary licensing terms.