Disclosures and Commitments to Standard-Setting Organizations

Joseph Kattan

1/01/2005
(Original Publish Date: 2000)

In this article, the author discusses the problems created when participating companies in standards-setting organizations later assert patents on technologies adopted in those standards. The author discusses the burden upon companies for disclosure of relevant patents, and the ramifications if they do not do so, including possible antitrust complaints. The author discusses the assertion that market power is conferred upon the owners of patents to technologies incorporated into standards, arguing that such market power is not always created, and other times is justified. The author also discusses the efforts by standard-setting organizations to limit the incorporation of patented technologies, and to require members either to disclaim any right to assert patents, or to agree to license patents on a royalty-free or RAND basis. He discusses the way in which most standard-setting bodies do not require patent searches, due to the chilling effect it has on participation in standard-setting. The author cites several cases where participating companies did not disclose, and often advocated adoption of technologies for which they held patents, and he discusses defenses that may be asserted in future cases. Finally, the author concludes that many of the antitrust cases have not reached a definitive resolution, and there are many issues to be resolved in future cases.