Toward Greater Clarity And Consistency In Patent Disclosure Policies In A Post-Rambus World

Nicos L Tsilas, Senior Attorney, Microsoft Corporation

1/01/2005
(Original Publish Date: 2005)

The United States Court of Appeals for the Federal Circuit's recent decision in the Rambus, Inc. v. Infineon Technologies AG litigation has sparked a flurry of activity, as well as considerable consternation, in standards development organizations ("SDOs"). The court unabashedly criticized the SDO at issue, the Joint Electron Device Engineering Council ("JEDEC"), for a "staggering lack of defining details" in its patent policy and failure to define clearly "what, when, how, and to whom the members must disclose [patent information]." This criticism has led numerous SDOs of all shapes and sizes to re-examine and revise their patent policies. In particular, SDOs have been revisiting fundamental questions about how to establish an optimal patent disclosure policy that satisfies mission-critical but sometimes competing goals. Those goals include encouraging participation in and contributions to the SDO as well as facilitating the efficient adoption and widespread implementation of technical standards. Goals also may include deterring "gaming" of the process to the greatest extent possible. Bad actors may attempt to use unfairly information learned from the SDO, or they may assert patents they failed to disclose to the SDO against implementers of the very standard they helped shape.