Symposium: The Interface Between Intellectual Property Law and Antitrust Law: Standards Setting and Antitrust

David Teece, and Edward Sherry

1/01/2005
(Original Publish Date: 4/1/2004)

This section analyzes the interplay between antitrust and intellectual property, focusing on the various roles that firms play in standards-setting organizations (SSOs). ... Armed with such knowledge, the SSO can choose to adopt another alternative if it believes that the patent holder's prospective royalties are too high relative to the benefits of using the patented technology. ... Under a search and/or disclosure rule, the question is "to what extent does a participant in an SSO have an obligation to search for, and/or to disclose, the existence of IP (whether issued or pending, whether its own or belonging to others) that may relate to a (proposed or issued) standard?" Under a licensing rule, the question is "to what extent does a participating IP holder have an obligation to license its IP to those practicing the standard, and on what terms?" ... Many SSOs have policies that, at least on paper, prevent the SSO from adopting a standard when there is any doubt as to whether a known patent reads on the proposed standard, unless the patent holder has agreed to license its patent to all potential users of the standard, whether royalty-free or on a "reasonable and non-discriminatory" basis.