Essential patent
An essential patent or standard-essential patent (SEP) is a patent that claims an invention that must be used to comply with a technical standard.[1] Standards organizations, therefore, often require members disclose and grant licenses to their patents and pending patent applications that cover a standard that the organization is developing.[2]
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Higher category: Patents, Patent law |
If a standards organization fails to get licenses to all patents that are essential to complying with a standard, owners of the unlicensed patents may demand or sue for royalties from companies that adopt the standard. This happened to the GIF and JPEG[3] standards, for example.
Determining which patents are essential to a particular standard can be complex.[4] Standardisation organizations require licences of essential patents to be on fair, reasonable, and non-discriminatory (FRAND) terms.
See also
- Patent ambush, a situation where a member of a standards organization withholds information about patents they own during development of a proposed standard and subsequently claims them to be relevant to the standard as adopted.
- Patent map
- Patent thicket
- Orange-Book-Standard
References
- Shapiro, Carl, “Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting”, forthcoming Innovation Policy and the Economy, Volume I, MIT Press, 2001
- J. Gregory Sidak, The Meaning of FRAND, Part I: Royalties, 9 J. COMPETITION L. & ECON. 931, 949 (2013), https://www.criterioneconomics.com/meaning-of-frand-royalties-for-standard-essential-patents.html."
- "The JPEG patent [LWN.net]". lwn.net. Retrieved 2018-12-26.
- Elizabeth Woyke (2011-09-21). "Identifying The Tech Leaders In LTE Wireless Patents". Forbes. Retrieved March 10, 2012.
Further reading and viewing
- "Potential Antitrust Liability Based on a Patent Owner's Manipulation of Industry Standard Setting", Proceedings of ABA Antitrust Section Spring Meeting (2003) by Janice M. Mueller.
- "Patent Misuse Through the Capture of Industry Standards", 17 Berkeley Tech. L.J. 623 (2002) by Janice M. Mueller.
- Mossoff, Adam; Contreras, Jorge; Kulbaski, James J. (November 30, 2012). Standards-Essential Patents: Where Do IP Protections End and Antitrust Concerns Begin? (video). Washington Legal Foundation. Archived from the original (ASX) on March 3, 2016. Retrieved December 17, 2012.