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 organizations, 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 (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
* ''
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