Disclosure Practices at SSOs

Abstract

AbstractAs institutions responsible for the development of interoperability standards, standard-setting organizations (SSOs) have played the all-important role of co-ordinating the activities of intellectual property rights (IPR) holders, while at the same time stimulating innovation and fostering economic growth. Having said that, managing the relationship between different members of SSOs is not the easiest of tasks, for when it comes to standardization of technology reading on patents, the aims of standard essential patent (SEP) holders and implementers are quite the opposite. The conflicting interests of the two, coupled with the market power accruing to patent holders from the inclusion of their SEPs in a standard, forces the SSOs’ hands into adopting IPR policies as a tool for regulating the conduct of and imposing limits on, SEP holders vis-à-vis the exercise of their IP rights. Under SSO IPR policies, patent holders are required to disclose and license their patents essential to a standard on fair, reasonable and non-discriminatory (FRAND) terms. This chapter centers around the first of these obligations, i.e., Disclosure. The Chapter provides a justification for enforcement of disclosure obligations, followed by a comparative analysis of the various types of disclosure practices adopted by SSOs in the United States (U.S.) and European Union (EU), with a specific focus on the aspects of essentiality and the timing of disclosure. It further offers an evaluation of the problems encountered by the aforementioned SSOs vis-à-vis essentiality and disclosure, and discusses the possible solutions to tackle the same.