A Market Reliance Theory for FRAND Commitments and Other Patent Pledges PDF Download
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Author: Jorge L. Contreras
Publisher:
ISBN:
Category :
Languages : en
Pages : 0
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Book Description
Patent holders are, with increasing frequency, making public promises to refrain from asserting patents under certain conditions, or to license patents on terms that are “fair, reasonable and non-discriminatory” (FRAND). These promises or “patent pledges” generally precede formal license agreements and other contracts, but are nevertheless intended to induce the market to make expenditures and adopt common technology platforms without the fear of patent infringement. But despite their increasing prevalence, current contract, property and antitrust law theories used to explain and enforce patent pledges have fallen short. Thus, a new theory is needed to secure the market-wide benefits that patent pledges can offer. This article proposes a novel “market reliance” theory for the enforcement of patent pledges. Market reliance is rooted in the equitable doctrine of promissory estoppel, but adds a rebuttable presumption of reliance borrowed from the “fraud-on-the-market” theory under Federal securities law. Under this approach, a patent holder's public commitment is enforceable by any participant in the relevant market, absent a showing that it knowingly rejected the commitment. The market reliance theory offers a robust means for enforcing legitimate patent pledges by third party market participants, and extends the effect of such pledges to downstream purchasers of patents. As such, the market reliance theory could fill a critical gap in the existing patent enforcement landscape and give greater assurance to the technology markets that depend on them.
Author: Jorge L. Contreras
Publisher:
ISBN:
Category :
Languages : en
Pages : 0
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Book Description
Patent holders are, with increasing frequency, making public promises to refrain from asserting patents under certain conditions, or to license patents on terms that are “fair, reasonable and non-discriminatory” (FRAND). These promises or “patent pledges” generally precede formal license agreements and other contracts, but are nevertheless intended to induce the market to make expenditures and adopt common technology platforms without the fear of patent infringement. But despite their increasing prevalence, current contract, property and antitrust law theories used to explain and enforce patent pledges have fallen short. Thus, a new theory is needed to secure the market-wide benefits that patent pledges can offer. This article proposes a novel “market reliance” theory for the enforcement of patent pledges. Market reliance is rooted in the equitable doctrine of promissory estoppel, but adds a rebuttable presumption of reliance borrowed from the “fraud-on-the-market” theory under Federal securities law. Under this approach, a patent holder's public commitment is enforceable by any participant in the relevant market, absent a showing that it knowingly rejected the commitment. The market reliance theory offers a robust means for enforcing legitimate patent pledges by third party market participants, and extends the effect of such pledges to downstream purchasers of patents. As such, the market reliance theory could fill a critical gap in the existing patent enforcement landscape and give greater assurance to the technology markets that depend on them.
Author: Jay P. Kesan
Publisher:
ISBN:
Category :
Languages : en
Pages : 0
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Book Description
The Internet, computing, and telecommunications industries are ripe for a collision between the worlds of intellectual property and standardization. Many technologies in these industries are covered by patents, and some of these patented technologies are essential to standards necessary for interoperability. Many standard-setting organizations (SSOs) adopt IP rules that require participants in the standard-setting process to disclose essential patents or promise to license essential patents on fair, reasonable, and nondiscriminatory (FRAND) terms to implementers of the standard. However, many SSOs also state that the SSO will not get involved in licensing disputes. Thus, it is left to the patent owner and the implementer of the standard to work through their differences, which sometimes results in generalist judges resolving cutting edge technology issues with potentially far-reaching impacts on consumers. We examine the theoretical foundations of FRAND commitments and analyze recent case law to expose the limited ways that theories grounded in patent, antitrust, and contract can apply to problems concerning the FRAND commitment. We note that a contract-based theory offers a good approach in many situations, but there are significant limitations to contract theory as applied to FRAND commitments. In particular, contract theory fails to effectively address the problem of enforcing FRAND commitments after an essential patent has been transferred. In this Article, we propose a novel theory for applying property law to FRAND commitments. As recent work by Merrill and Smith on the property and contract interface demonstrates, there are a number of areas of law that cannot be characterized as purely “in rem” or “in personam,” and in our view, this includes patents in the context of standards. Our property approach thus emphasizes the FRAND commitment as creating something analogous to a servitude under real property law, but our approach also acknowledges the importance of contract law principles to address many other issues. To preserve the viability of FRAND commitments, we have two main recommendations: (1) courts should view FRAND commitments as having traits of both property and contract and apply our proposed theory that FRAND commitments create a servitude that runs with the patent; and (2) courts and adjudicative agencies should reject efforts to impose injunctions on the use of essential patents when the infringer must use the patent to comply with the standard. Injunctions against the use of SEPs could have more harmful effects on consumers and competition than injunctions against the use of non-SEPs, and by making a FRAND commitment, the patent owner is stating that damages would be adequate to compensate for a loss of exclusivity. We thus urge courts to view a FRAND commitment as converting a property rule into a liability rule. If these two recommendations are adopted, companies that manufacture products that conform to technical standards will stand on firmer legal ground, confident in the availability of a license to all patents that are essential to a standard. This increased legal certainty through carefully circumscribed property and contractual rights will, in turn, foster further investments and support the adoption of standardized technologies, assuring the continuance of a robust market for innovation.
Author: C. Bradford Biddle
Publisher: Cambridge University Press
ISBN: 1108426751
Category : Business & Economics
Languages : en
Pages : 379
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Book Description
Through a collaboration among twenty legal scholars from North America, Europe and Asia, this book presents an international consensus on the use of patent remedies for complex products such as smartphones, computer networks, and the Internet of Things. This title is also available as Open Access on Cambridge Core.
Author: Jorge L. Contreras
Publisher: Edward Elgar Publishing
ISBN: 1785362496
Category : Patent laws and legislation
Languages : en
Pages : 360
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Book Description
Patent holders are increasingly making voluntary, public commitments to limit the enforcement and other exploitation of their patents. The best-known form of patent pledge is the so-called FRAND commitment, in which a patent holder commits to license patents to manufacturers of standardized products on terms that are “fair, reasonable and non-discriminatory.” Patent pledges have also been appearing in fields well beyond technical standard-setting, including open source software, green technology and the biosciences. This book explores the motivations, legal characteristics and policy goals of these increasingly popular private ordering tools.
Author: Manveen Singh
Publisher: Springer Nature
ISBN: 9811926239
Category : Law
Languages : en
Pages : 227
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Book Description
This book offers a unique insight into the world of standard-setting organizations (SSOs)’ IPR policies and the role they play in balancing the interests of innovators and implementers, vis-à-vis the development of standards. Since the beginning of the 21st century, there have been quite a few questions asked of the SSOs as to the legality of their IPR policies and the enforceability of disclosure and licensing obligations enshrined therein. That, coupled with disagreements over the appropriate royalty rate and royalty base, has resulted in extensive litigation between innovators and implementers, especially across the Atlantic. The Book, in keeping the USA and EU as the two primary jurisdictions, offers a comprehensive analysis of the disclosure and licensing obligations under SSO IPR policies, with strong theoretical foundations justifying their imposition. More specifically, it offers a bird’s eye view of the various facets of disclosure and licensing, ranging from non-disclosure and transparency on one hand, to the determination of FRAND on the other. While much has been said about the benefits arising out of collaborative standard-setting, disputes involving SEP licensing have not been limited to the courts, and have attracted a significant amount of scrutiny by competition/antitrust agencies. The Book provides an elaborate account of the anti-competitive concerns surrounding standard-setting, and further documents the role of courts and competition agencies in ensuring good faith licensing negotiations between the SEP holders and implementers. Despite largely focusing on SEP licensing disputes in the USA and EU, the Book also offers a dedicated chapter on standard-setting in the Indian context. The readers are presented with an in-depth discussion on the contrasting approaches adopted by the courts and the Competition Commission of India (CCI), in addressing disputes involving SEPs. The said discussion is supplemented by a careful analysis of the SEP licensing guidelines to have emerged out of other implementer-oriented economies like China and Japan. By doing so, the Book offers readers the opportunity to study and compare the SEP licensing framework in developed, as well as developing economies. SSO IPR policies play an integral role in the development of standards, and with technologies such as the Internet of Things and 5G knocking on the doors, the Book makes for a valuable study on the nuances of standard-setting through the lens of SSOs, and will find takers among a wide reader base of students, researchers, academics, law practitioners, corporates, and policy makers.
Author: Simon Brinsmead
Publisher: Cambridge University Press
ISBN: 1108843018
Category : Business & Economics
Languages : en
Pages : 427
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Book Description
Proposes a new expert-led international instrument to address access to essential technical standards.
Author: Ben Depoorter
Publisher: Edward Elgar Publishing
ISBN: 1789903998
Category : Law
Languages : en
Pages : 1504
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Book Description
Both law and economics and intellectual property law have expanded dramatically in tandem over recent decades. This field-defining two-volume Handbook, featuring the leading legal, empirical, and law and economics scholars studying intellectual property rights, provides wide-ranging and in-depth analysis both of the economic theory underpinning intellectual property law, and the use of analytical methods to study it.
Author: Ashish Bharadwaj
Publisher: Springer
ISBN: 9811060118
Category : Law
Languages : en
Pages : 218
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Book Description
This book is open access under a CC BY 4.0 license. With technology standards becoming increasingly common, particularly in the information and communications technology (ICT) sector, the complexities and contradictions at the interface of intellectual property law and competition law have emerged strongly. This book talks about how the regulatory agencies and courts in the United States, European Union and India are dealing with the rising allegations of anti-competitive behaviour by standard essential patent (SEP) holders. It also discusses the role of standards setting organizations / standards developing organizations (SSO/SDO) and the various players involved in implementing the standards that influence practices and internal dynamics in the ICT sector. This book includes discussions on fair, reasonable and non-discriminatory (FRAND) licensing terms and the complexities that arise when both licensors and licensees of SEPs differ on what they mean by “fair”, “reasonable” and “non-discriminatory” terms. It also addresses topics such as the appropriate royalty base, calculation of FRAND rates and concerns related to FRAND commitments and the role of Federal Trade Commission (FTC) in collaborative standard setting process. This book provides a wide range of valuable information and is a useful tool for graduate students, academics and researchers.
Author: Igor Nikolic
Publisher: Bloomsbury Publishing
ISBN: 1509947566
Category : Law
Languages : en
Pages : 319
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Book Description
What is the licensing framework of standard essential patents (SEPs) for connectivity standards such as 5G and Wi-Fi? How will the framework change with the Internet of Things (IoT)? This book provides comprehensive answers to these questions. For over two decades, connectivity standards have been the subject of litigation and controversy around the globe. Now, with the introduction of 5G and the emergence of the world of connected objects, or the IoT, the licensing framework for SEPs is becoming even more contentious. In order to bring clarity to the debate, this book analyses and explains key components of a fair, reasonable and non-discriminatory (FRAND) licence for SEPs; clarifies the economic, policy and market background of SEP disputes; examines the interrelated application of contract, patent and competition laws; and describes the approaches by courts and regulators in the EU, US and the UK. Importantly, the book also assesses how the experience from the smartphone and ICT industries can be applied in a new environment of the IoT, and considers what needs to be changed in the future SEP licensing landscape. The book provides a holistic coverage of SEP licensing issues in an attempt to reduce uncertainty within this highly complex and technical area, and will be useful to practitioners, policy makers, SMEs and large technology companies in the IoT, as well as academics interested in the field.
Author: Kung-Chung Liu
Publisher: Routledge
ISBN: 1000760073
Category : Law
Languages : en
Pages : 339
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Book Description
This book is a very useful reference guide on how de jure and de facto standards are being developed and how these standards compete against each other. The book also looks at how FRAND commitments are being determined across countries, how these disputes have played out, especially in Asia, and how they can be better dealt with in future globally. The book gives a broad overview of the business model of dominant SEP patentees and analyzes some standards for FRAND licensing of SEPs which are converging in major Asian jurisdictions. It highlights the need for ex ante regulation in the FRAND licensing of SEPs and suggests how we can reconcile conflicts which may arise from different legal standards. This book provides detailed and comprehensive analysis of recent SEP cases with an emphasis on Asia and will interest anyone who wishes to have more insight into the legal, policy, industrial and economic implications of such issues.
