Participation in Standard-Setting Organizations

Some patent-owning companies choose to participate in standard-setting organizations (SSOs), such as the IEEE, IETF and ANSI. They do so for a variety of business reasons, including the opportunity to monitor industry trends and to influence technological advancement. However, the business advantages of participation must be balanced against its potential legal consequences to the company's IP rights. Accidental or premature disclosure, failure to disclose, and licensing and enforcement practices can lead to loss of patent and trade secret rights, equitable defenses for infringers, and antitrust concerns. The current litigation between Rambus and Infineon provides a cautionary tale for both SSOs and member companies of what can happen if a company participates in an SSO whose IP patent policy is not clearly defined. <i>See, e.g., Rambus, Inc. v. Infineon Technologies AG,</i> 164 F. Supp. 2d 743 (E.D. Va. 2001), <i>aff'd in part, rev'd in part, and vacated in part,</i> 318 Fed. 3d 1081 (Federal Circuit 2003). In order to avoid such losses, companies need to investigate the IP policies of the SSOs to which they belong and carefully assess and monitor their compliance with those policies.

16 minute read October 01, 2003 at 02:19 PM

By

Laura Majerus and Robin Reasoner