Article
Perilous Deviations from FRAND Harmony — Operational Pitfalls of the 2015 IEEE Patent Policy
IEEE SIIT 2015, 9th Int’l. Conf. on Standardization and Innovation in Information Technology, Sunnyvale, CA.
(2015)
Abstract
Standard Development Organizations (SDOs) have one thing in common: they uniformly refrain from formally defining the meaning of “Fair, Reasonable and Non-Discriminatory” (FRAND) licensing terms required for patents essential to implement technical standards, called standard-essential patents (SEPs). I call this uniformity in non-definition “FRAND Harmony.” However, in a bitterly contested and controversial move, the IEEE Standards Association (IEEE-SA) amended its patent policy, effective March 15, 2015, to become the only major SDO to substantively define FRAND licensing terms, a definition at great variance with other SDOs’ practice and a substantial deviation from IEEE's traditional neutrality on FRAND terms. IEEE’s new departure from de facto industry standard licensing practice will put parties into irreconcilable legal positions: SEP licenses for new standards may not simultaneously conform to the new FRAND terms mandated by the 2015 IEEE patent policy, and to legacy FRAND terms in the old licenses that necessarily follows legacy technology. This will undermine dynamic efficiencies in innovation where new standards incorporate other legacy standards by reference as "normative," and where standard amendments are rolled-up into new revisions of the standard. Under this new patent policy, IEEE Societies will be handicapped in developing new standards that build on legacy standards. IEEE’s deviation from FRAND Harmony has the additional potential of inducing a practice that would discriminate among SEP holders in adopting technologies in IEEE standards. Many top quality and complex standards projects may grind to a halt unless IEEE-SA reverses course, as another SDO did two decades ago when their similar experiment with FRAND disharmony failed.
Keywords
- FRAND; Standard Essential Patent; Royalty; Injunction; ANSI,
- IEEE; ETSI; ITU
Disciplines
Publication Date
October 8, 2015
DOI
doi: 10.1109/SIIT.2015.7535599.
Citation Information
Ron D Katznelson. "Perilous Deviations from FRAND Harmony — Operational Pitfalls of the 2015 IEEE Patent Policy" IEEE SIIT 2015, 9th Int’l. Conf. on Standardization and Innovation in Information Technology, Sunnyvale, CA. (2015) Available at: http://works.bepress.com/rkatznelson/83/