Introduction
Standards are essential for the wide adoption of new technologies in the marketplace. The potential for conflict between patents and standards arises when the implementation of the standard necessitates the use of technology protected by one or more patents. Although the objective of a standard setting body (SSB) as well as of participating companies is to establish standardized technology that can be used as widely as possible, rightholders may have a commercial interest in pushing for the adoption of their own patented technology in the framework of the standard, so that they could benefit from royalties. If a patent owner can, however, block the implementation of the standard by refusing a license or claiming unreasonably high royalties, this would obviously be against the objective of the technical standardization process.
In order to minimize this risk of conflict and to assure a smooth and wide dissemination of standardized technology, most SSBs have established their own patent policy. For example, many SSBs require the parties involved in the standard-setting process to disclose information regarding relevant patents (and, sometimes, also patent applications), in order to include the relevant information into the standard-setting process. If any relevant patent (or patent application) exists, many SSBs require the patentee to agree on specific licensing conditions, such as that the license must be granted under reasonable and non-discriminatory terms (RAND license) or that the license must be royalty free (RF). However, in general, the SSBs are not involved in either arrangements related to patents (such as license agreements) or in settling disputes in respect of the validity and scope of the relevant patents. As with any other policy issues, if the patent policy has not been drafted in a clear and unambiguous manner, different interpretations may be the source of disputes among the parties with respect to their obligations.
One way to address the situation where different patentees own a number of patents relevant to the standard is to set up a patent pool. Although each patent pool may be different, typically, a pool enables participating patentees to use the pooled patents, provides a standard license in respect of the pooled patents for licensees who are not members of the pool, and allocates to each member of the pool a portion of the licensing fees in accordance with the agreement. Patent pool agreements may provide competitive benefits through, for example, bundling patented technologies, removing patent-blockages or avoiding the need to conclude multiple licenses. On the other hand, certain types of patent pool agreements, for example, where they include patents that are substitutes for each other, may raise concerns as to their effect on competition.
Related Sites
The inclusion of a link to a site does not imply the agreement of WIPO, its Member States or the International Bureau with any of the views expressed on the site.
World Intellectual Property Organization
- Standing Committee on the Law of Patents (SCP)
- Standards and Patents (document SCP/13/2)
- Colloquia on Selected Patent Issues " Standards and Patents", November 29, 2006
- Open Forum on the Draft Substantive Patent Law Treaty , March 1 to 3, 2006
- Standards, Intellectual Property rights (IPRs) and Standards-setting Process
- Current Topics in IPR Protection in the Context of Global Standard-setting Processes, George T. Willingmyre
Other International Organizations
- International Telecommunication Union (ITU)
- European Commission
- Communication from the Commission "Intellectual Property Rights and Standardization" [COM (92)445], October 27, 1992
- Intellectual Property Rights in ICT Standardisation Workshop, November 2008
Standard Setting Bodies
- American National Standards Institute (ANSI)
- ANSI Patent Policy (2002)
- ANSI Essential Requirements: Due process requirements for American National Standards (2005)
- Guidelines for Implementation of the ANSI Patent Policy (updated 2003)
- European Committee for Electrotechnical Standardization (CENELEC) - CEN/CENELEC Guide 8: Standardization and intellectual property rights
- European Committee for Standardization (CEN) - CEN/CENELEC Guide 8: Standardization and intellectual property rights
- European Telecommunications Standards Institute (ETSI)
- IEEE Standards Association
- International Organization for Standardization (ISO)
- International Electrotechnical Commission (IEC)
- The Internet Engineering Task Force (IETF) - IETF IPR disclosure page
- OASIS - OASIS IPR Policy
- World Wide Web Consortium (W3C) - W3C Patent Policy Activity
National/Regional Competition Authorities
- European Commission (EC)
- Commission Regulation (EC) No 772/2004 of 27 April 2004 on the application of Article 81(3) of the Treaty to categories of technology transfer agreements
- Commission Notice - Guidelines on the application of Article 81 of the EC Treaty to technology transfer agreements
- Federal Trade Commission (FTC)
- United States Department of Justice
Others
- AIPPI - Q157: The Relationship between Technical Standards and Patent Rights [PDF]
- Consumer Project on Technology (CPTech)
- Foundation for a Free Information Infrastructure (FFII) - Standardization and software patents
- MPEG LA - MPEG-2 Patent Portfolio License