An essential patent or standard-essential patent (SEP) is a
patent
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
that
claims
Claim may refer to:
* Claim (legal)
* Claim of Right Act 1689
* Claims-based identity
* Claim (philosophy)
* Land claim
* A ''main contention'', see conclusion of law
* Patent claim
* The assertion of a proposition; see Douglas N. Walton
* A righ ...
an invention that must be used to comply with a
technical standard
A technical standard is an established norm or requirement for a repeatable technical task which is applied to a common and repeated use of rules, conditions, guidelines or characteristics for products or related processes and production methods, ...
.
Standards organization
A standards organization, standards body, standards developing organization (SDO), or standards setting organization (SSO) is an organization whose primary function is developing, coordinating, promulgating, revising, amending, reissuing, interpr ...
s, therefore, often require members disclose and grant licenses to their patents and pending patent applications that cover a standard that the organization is developing.
If a standards organization fails to get licenses to all patents that are essential to complying with a standard, owners of the unlicensed patents may demand or sue for royalties from companies that adopt the standard. This happened for example to the
JPEG
JPEG ( ) is a commonly used method of lossy compression for digital images, particularly for those images produced by digital photography. The degree of compression can be adjusted, allowing a selectable tradeoff between storage size and imag ...
standard.
Determining which patents are essential to a particular standard can be complex.
Standardisation organizations require licences of essential patents to be on
fair, reasonable, and non-discriminatory
Reasonable and non-discriminatory (RAND) terms, also known as fair, reasonable, and non-discriminatory (FRAND) terms, denote a voluntary licensing commitment that standards organizations often request from the owner of an intellectual property r ...
(FRAND) terms.
See also
*
Patent ambush A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a standard, about a patent that the member or the member's company owns, has pending, or intends to file, ...
, a situation where a member of a standards organization withholds information about patents they own during development of a proposed standard and subsequently claims them to be relevant to the standard as adopted.
*
Patent map
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A ...
*
Patent thicket
A patent thicket is "an overlapping set of patent rights" which requires innovators to reach licensing deals for multiple patents. This concept is associated with negative connotations and has been described as "a dense web of overlapping intellect ...
* ''
Orange-Book-Standard
''Orange-Book-Standard'' (Az. KZR 39/06) is a decision issued on May 6, 2009 by the Federal Court of Justice of Germany (german: Bundesgerichtshof, BGH) on the interaction between patent law and technical standards, and more generally between int ...
''
References
Further reading and viewing
*
Potential Antitrust Liability Based on a Patent Owner's Manipulation of Industry Standard Setting, ''Proceedings of ABA Antitrust Section Spring Meeting'' (2003) by Janice M. Mueller.
*
Patent Misuse Through the Capture of Industry Standards, 17 ''Berkeley Tech. L.J.'' 623 (2002) by Janice M. Mueller.
* {{cite video , last1=Mossoff , first1=Adam , last2=Contreras , first2=Jorge , last3=Kulbaski , first3=James J. , date=November 30, 2012 , title=Standards-Essential Patents: Where Do IP Protections End and Antitrust Concerns Begin? , url=http://iiscast.wlf.org/vod/sctr01_20121129093925/1/start.html?media=Media1a.asx , format=ASX , medium=video , publisher=Washington Legal Foundation , archiveurl=https://web.archive.org/web/20160303221809/http://iiscast.wlf.org/vod/sctr01_20121129093925/1/start.html?media=Media1a.asx , archivedate=March 3, 2016 , accessdate=December 17, 2012 , url-status=dead
Patent law
Standards