Patent ambush
Encyclopedia
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 the United States
and the European Union
and has resulted in several lawsuit
s and other actions.
In the United States, a patent ambush may involve the filing of a continuation application with claim
s 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.
Standards organization
A standards organization, standards body, standards developing organization , or standards setting organization is any organization whose primary activities are developing, coordinating, promulgating, revising, amending, reissuing, interpreting, or otherwise producing technical standards that are...
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
Ansi
Ansi is a village in Kaarma Parish, Saare County, on the island of Saaremaa, Estonia....
, 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
Royalties
Royalties are usage-based payments made by one party to another for the right to ongoing use of an asset, sometimes an intellectual property...
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
Competition law, known in the United States as antitrust law, is law that promotes or maintains market competition by regulating anti-competitive conduct by companies....
in the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
and the European Union
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
and has resulted in several lawsuit
Lawsuit
A lawsuit or "suit in law" is a civil action brought in a court of law in which a plaintiff, a party who claims to have incurred loss as a result of a defendant's actions, demands a legal or equitable remedy. The defendant is required to respond to the plaintiff's complaint...
s and other actions.
In the United States, a patent ambush may involve the filing of a continuation application with claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s targeting a standard or the exploitation of a submarine patent
Submarine patent
A submarine patent is a patent whose issuance and publication are intentionally delayed by the applicant for a long time, such as several years. This strategy requires a patent system where patent applications are not published. In the United States, patent applications filed before November 2000...
, that is, a patent application which has been filed but has not yet been made public years after the filing.
See also
- Essential patentEssential patentAn essential patent is a patent which discloses and claims one or more inventions that are required to practice a given industry standard. Standardisation bodies, therefore, often require members disclose and grant licenses to patents and pending patent applications that they own and that cover a...
, a patent which is essential for implementing e.g. a standard - Patent misusePatent misuseIn United States patent law, patent misuse is an affirmative defense used in patent litigation when a defendant has been accused to have infringed a patent. It has also been used to mitigate damages following a finding of infringement or justify a failure to pay contracted-for royalties...
- Patent thicketPatent thicketA patent thicket is "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 require innovators to reach licensing deals for multiple patents...