Patent Challenges for Standard-Setting in the Global Economy Lessons from Information and Communications Technology (2013) / Chapter Skim
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4 SEP Disclosure and Information Transparency
4 SEP Disclosure and Information Transparency
Pages 71-80
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From page 71... ...
In fact, such obligations often represent a very significant part of the overall text of these policies. However, there are also SSO IPR policies that do not include disclosure obligations at all.
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From page 72... ...
Often such disclosures at a meeting are incomplete and the individual's employer must determine whether a formal statement needs to be submitted to the SSO. It is important to recognize that because disclosure obligations can create significant costs and burdens for participating patent holders, many SSOs are willing to accept broad licensing commitments in lieu of detailed disclosures.
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From page 73... ...
Second, for planning purposes, actual and prospective implementers of the standard may need to know which parties claim to own essential IPR, which specific patents they believe may contain essential claims, whether the IPR holder will require implementers to obtain a license, and if so, whether payment of a royalty or other fee will be required. Sufficiently specific disclosure information also allows implementers to review how many possible SEPs are disclosed, their nature and potential value, and whether implementers agree that the patents in question are valid and essential.
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From page 74... ...
One obvious cause is that IPR policies can only bind members or participants and not third parties. At best, identified third parties can only be requested to provide disclosures and possibly licensing commitments.
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From page 75... ...
A second reason for under-disclosure is that the disclosure obligation, in the context of a specific standard falling under a particular SSO's IPR policy, may not be triggered at all, even if the IPR owners are members or participants. As noted above, disclosure obligations are often linked to actual participation in a working group or to the submission of a technical proposal, and to actual knowledge of patents or patent applications.
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From page 76... ...
In some SSOs, licensing commitments associated with specific disclosures apply only to those particular patents.4 Further, allowing blanket disclosures may increase the willingness of firms to be SSO members, participate in work programs, and make technical submissions. Blanket disclosures also provide advantages for SEP holders.
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From page 77... ...
All of the factors above may affect the accuracy and validity of information contained in disclosures and several IPR policies recommend that SEP owners update disclosure information. However, few SSO policies provide guidance on how and when any such updating should occur, let alone impose a requirement to do so.
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From page 78... ...
However, some companies do not make use of the database. Limited information on third party IPRs As mentioned above, SSO IPR policies are not and usually cannot be binding on non-members or non-participants.8 In the absence of effective rules on third party disclosures, there is an incomplete IPR disclosure database.
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From page 79... ...
On the other hand, achieving transparency through disclosures entails significant efforts and compliance costs for companies. 4.4 The Timing of Disclosures in Relation to Licensing Commitment Procedures When analyzing the IPR databases of large SSOs, it becomes evident that many initial disclosures are submitted long after the final standard is adopted, even if the SSO policies encourage early disclosure.
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From page 80... ...
4.5 Recommendations to SSOs SSOs should consider several actions to increase the transparency of SEP ownership and licensing. Recommendation 4:1 SSOs that do not have a policy requiring FRAND licensing commitments from all participants should have a disclosure element as part of their IPR policy.
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