patent ambush



A patent ambush occurs when a member of a standard-setting organization withholds information, during participation in development and setting a
standard Standard may refer to: Symbols * Colours, standards and guidons, kinds of military signs * Standard (emblem), a type of a large symbol or emblem used for identification Norms, conventions or requirements * Standard (metrology), an object th ...
, about a patent that the member or the member's company owns, has pending, or intends to file, which is relevant to the standard, and subsequently the company asserts that a patent is infringed by use of the standard as adopted. Standards-setting organizations, such as the
IEEE The Institute of Electrical and Electronics Engineers (IEEE) is a 501(c)(3) professional association for electronic engineering and electrical engineering (and associated disciplines) with its corporate office in New York City and its operatio ...
ANSI The American National Standards Institute (ANSI ) is a private non-profit organization that oversees the development of voluntary consensus standards for products, services, processes, systems, and personnel in the United States. The orga ...
, typically require each member of their committees engaged in standard setting to file a letter with the organization stating either that the member does not know of any patents of their company relevant to the standard or else identifying those patents about which they know. When the organization is advised of relevant patents, often it will either seek to use a different technology for the standard or obtain a commitment from the patent owner that it will license users of the standard on fair reasonable and non-discriminatory (FRAND) terms. Once the proposed standard has been adopted, companies wishing to implement the standard may be forced to pay substantial
royalties A royalty payment is a payment made by one party to another that owns a particular asset, for the right to ongoing use of that asset. Royalties are typically agreed upon as a percentage of gross or net revenues derived from the use of an asset o ...
to the patent holder, creating barriers to entry that distort competition within the market. Consequently, the practice has been considered to be in breach of antitrust or
competition law Competition law is the field of law that promotes or seeks to maintain market competition by regulating anti-competitive conduct by companies. Competition law is implemented through public and private enforcement. It is also known as antitrust ...
in the
United States The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country primarily located in North America. It consists of 50 states, a federal district, five major unincorporated territo ...
and the
European Union The European Union (EU) is a supranational political and economic union of member states that are located primarily in Europe. The union has a total area of and an estimated total population of about 447million. The EU has often been ...
and has resulted in several
lawsuit - A lawsuit is a proceeding by a party or parties against another in the civil court of law. The archaic term "suit in law" is found in only a small number of laws still in effect today. The term "lawsuit" is used in reference to a civil acti ...
s and other actions. In the United States, a patent ambush may involve the filing of a continuation application with claims targeting a standard or the exploitation of a
submarine patent A submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, which can be several years, or a decade.
, that is, a patent application which has been filed but has not yet been made public years after the filing.Stacy Baird, "The Government at the Standards Bazaar", 18 ''Stanford Law & Policy Rev.'' 35, 82 n.138 (2007) (noting that "the risks of assault on a standards-setting proceeding are most notably that of the imposition of a "submarine patent" or of patent royalty "hold up" risks".

See also

* Essential patent, a patent which is essential for implementing e.g. a standard *
Patent misuse In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the ...
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 ...


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Further reading

* Brian Dean Abramson,
The patent ambush: misuse or ''caveat emptor''?
'' IDEA: The Intellectual Property Law Review'', Vol. 51 No. 1, 2011, pp. 71-109. Ambush, patent