Perspectives on the current patent wars in the ICT industry

As a specialized agency of the United Nations and international standard development organization with a mandate to connect the world, ITU relies on the existence of a healthy and robust standards ecosystem.

ITU’s aim has always been, through the adoption of its RAND-based patent policy, to strike a working balance between the various interests of SEP owners and implementers. The current system has worked well, producing numerous worldwide standards whose unhindered implementation has been critical for the exponential growth of the ICT industry.

However, in view of the recent tension evidenced by the diverging opinions of our membership as well as by a number of court decisions worldwide ITU called together key stakeholders to a ITU Patent Roundtable held at ITU’s headquarters in Geneva on 10 October.

There is a concern that SEP litigation across the globe could signal to stakeholders that the implementation of certain standards can pose important risks, but also that there may no longer be a common understanding in the industry regarding the nature and limits of RAND commitments.

The development of coordinated high-level guidelines on the interpretation of RAND commitments could clearly be a useful step towards mitigating the current diversity of opinions in the industry.

However, it is important that any potential initiative for corrective action be taken with extreme caution so as to avoid creating imbalances or other unintended consequences in the standards ecosystem, which has been working well so far. The benefit of joining an organization such as ITU and committing resources to work together on international standard development would be undermined, if a member could easily torpedo the whole process by blocking the sale of products implementing ITU standards.

Investment on research and development relies heavily on effective patent enforcement remedies and on the widely held view that injunctive relief is essential to safeguarding the right of the patent holder to capitalize on its investment. On the other hand a threat of injunctive relief may increase the negotiating power of the SEP owner and thus result in higher royalties than the SEP owner could have obtained if the patent had not been incorporated in a standard. This additional hold-up value seems to be at the centre of the current debate and coming to an agreement on how to promptly and effectively address it might resolve much of the current friction in the industry.

As a consequence of the discussion in the Roundtable, the Director of the Telecommunication Standardization Bureau (TSB) has requested his Ad Hoc Group on IPR  to consider guidelines on the availability of injunctive relief and the interpretation of ‘reasonable’ in a RAND context.  This group will meet next in January 2013.

By: Antoine Dore

Antoine Dore is a telecom lawyer and Senior Legal Officer at the ITU. Antoine is frequently called on to provide legal advice on policy questions involving IPR issues, notably in the context of ITU’s standardization activities. Prior to joining ITU, Antoine worked in a large Canadian law firm specializing in commercial and corporate law.

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