ABSTRACT: Intellectual Property Rights and Standard Setting

Andrew Updegrove, Partner, Gesmer Updegrove LLP

3/14/2008
(Original Publish Date: 3/1/2007)

Intellectual property rights (IPR), and particularly patent claims, provide special challenges to standards developers. Following adoption of standard, members may be unwilling to share implementation rights on licensing terms that are conducive to wide adoption of the standard (or at all). Or, during the development phase, they may secretly seek to ensure that a standard will infringe their undisclosed patent claims, in order to reap a harvest of royalties when those rights are revealed after the marketplace has already become locked in. Externally, there will often be patent claims that are essential to the implementation of a standard, but which may be owned by those that have little or no incentive to make their valuable IPR available on acceptable terms (or at all). As a result, standard setting organizations must have IPR policies that are designed to minimize - although they cannot totally eliminate - such problems. In this article, I briefly review: the history of IPR issues; those changes in the standard setting landscape that are accentuating IPR concerns today; the ways in which IPR (and particularly patent claims) give rise to concerns for standards developers and implementers; the documents that comprise an appropriate IPR management regime; and finally those areas in which IPR policies are most significantly being challenged and reworked today.