An essential patent or standard-essential
patent is a patent that claims an invention that must be used to comply
with a technical standard. 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 to the GIF and JPEG standards, for example.
Determining which patents are essential to a particular standard can be complex. Standardization organizations require licenses of essential patents to be on fair, reasonable, and non-discriminatory (FRAND) terms.
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, 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 and ANSI, 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 reasonable and non-discriminatory (RAND ) terms.
Once the proposed standard has been adopted, companies wishing to implement the standard may be forced to pay substantial royalties 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 in theUnited States
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, that is, a patent application which has been filed but has not yet been made public years after the filing
A patent map is a graphical model of patent visualisation. This practice "enables companies to identify the patents in a particular technology space, verify the characteristics of these patents, and ... identify the relationships among them, to see if there are any zones of infringement." Patent mapping is also referred to as patent landscaping.
A patent thicket carries a negative connotation and is best described as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology," or, in other words, "an overlapping set of patent rights” which requires innovators to reach licensing deals for multiple patents from multiple sources."
The expression may come from SCM Corp. v. Xerox Corp. patent litigation case in the 1970s, wherein SCM's central charge had been that Xerox constructed a "patent thicket" to prevent competition.
Patent thickets are used to defend against competitors designing around a single patent. It has been suggested by some that this is particularly true in fields such as software or pharmaceuticals, but Sir Robin Jacob has pointed out that "every patentee of a major invention is likely to come up with improvements and alleged improvements to his invention" and that "it is in the nature of the patent system itself that [patent thickets] should happen and it has always happened".
Patent thickets are also sometimes called patent floods, or patent clusters. According to a report by Professor Ian Hargreaves, published in May 2011, patent thickets "obstruct entry to some markets and so impede innovation." Patent thickets are said to have become common in fields like nanotechnology as more fundamental science is patented, and some authors have expressed concern that this could reduce technological development and innovation.
The economics of innovation literature suggests that patent thickets may have an ambiguous effect on patent transactions. On one hand, dispersion in the ownership of patents increases the number of patent owners with whom bargains have to be struck, and this may reduce the incentives to conduct patent transactions. But there is a second, countervailing effect: the presence of overlapping patent rights may reduce the value at stake in each individual patent licensing negotiation, and this may facilitate licensing deals.
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 to the GIF and JPEG standards, for example.
Determining which patents are essential to a particular standard can be complex. Standardization organizations require licenses of essential patents to be on fair, reasonable, and non-discriminatory (FRAND) terms.
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, 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 and ANSI, 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 reasonable and non-discriminatory (
Once the proposed standard has been adopted, companies wishing to implement the standard may be forced to pay substantial royalties 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 in the
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, that is, a patent application which has been filed but has not yet been made public years after the filing
Patent Map
A patent map is a graphical model of patent visualisation. This practice "enables companies to identify the patents in a particular technology space, verify the characteristics of these patents, and ... identify the relationships among them, to see if there are any zones of infringement." Patent mapping is also referred to as patent landscaping.
Patent Thicket
A patent thicket carries a negative connotation and is best described as "a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology," or, in other words, "an overlapping set of patent rights” which requires innovators to reach licensing deals for multiple patents from multiple sources."
The expression may come from SCM Corp. v. Xerox Corp. patent litigation case in the 1970s, wherein SCM's central charge had been that Xerox constructed a "patent thicket" to prevent competition.
Patent thickets are used to defend against competitors designing around a single patent. It has been suggested by some that this is particularly true in fields such as software or pharmaceuticals, but Sir Robin Jacob has pointed out that "every patentee of a major invention is likely to come up with improvements and alleged improvements to his invention" and that "it is in the nature of the patent system itself that [patent thickets] should happen and it has always happened".
Patent thickets are also sometimes called patent floods, or patent clusters. According to a report by Professor Ian Hargreaves, published in May 2011, patent thickets "obstruct entry to some markets and so impede innovation." Patent thickets are said to have become common in fields like nanotechnology as more fundamental science is patented, and some authors have expressed concern that this could reduce technological development and innovation.
The economics of innovation literature suggests that patent thickets may have an ambiguous effect on patent transactions. On one hand, dispersion in the ownership of patents increases the number of patent owners with whom bargains have to be struck, and this may reduce the incentives to conduct patent transactions. But there is a second, countervailing effect: the presence of overlapping patent rights may reduce the value at stake in each individual patent licensing negotiation, and this may facilitate licensing deals.
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