ABSTRACT: Ex Ante Disclosure: Risks, Rewards, Process and Alternatives

Andrew Updegrove, Partner, Gesmer Updegrove LLP

2/11/2008
(Original Publish Date: 6/1/2006)

Ex ante disclosure of licensing terms, including cost, is being actively discussed today in a variety of standard setting organizations (SSOs), with strong opinions on both sides of the issue being offered in what at times has been a heated debate. In this article, I attempt to place this controversy in context by describing ex ante alternatives, the antitrust issues involved, and the alternative mechanisms that can, more appropriate, be employed instead to achieve similar results. I also suggest that ex ante disclosure presents no greater an antitrust challenge than has often been successfully addressed in the past in the course of implementing other changes to SSO intellectual property rights policies and procedures. I conclude by proposing that the standard setting community should embrace, perfect, and when appropriate, add prudently designed process steps to enable ex ante disclosure of relevant patent claims in order to increase the likelihood of issuing commercially viable.