In a recent comment, John Blyler asked if I had any thoughts on company employees in standards-setting bodies. The context is the Broadcom-Qualcomm lawsuit in which Broadcom alleged that a Qualcomm employee sat on a standards committee. The whole story is interesting in and of itself - and it’s not finished yet.


For me, the story hit home. Participating in standards committees can have implications on your company’s patent portfolio. This is the underlying reason for my “2nd Commandment for Effective Standards”.
Commandment #2: Do Not Mix Patents and Standards
Before I go any further, I must solemnly swear: I Am Not A Lawyer and I Am Not Giving Anyone Legal Advice. OK, now I am free to give my opinion.
If there is a mortal sin in standards, mixing patent rights with standards is it. It is cheating if you help develop a standard, don’t reveal that you have associated patents, and then assert your patent rights against others who use the standard. Famous lawsuits have shown that companies cannot introduce patents into the standards arena and expect to retain rights to their patents.
The term often used for patents that have standards implications is “essential patent”. This means that in order to make use of the standard, the patent would necessarily be infringed upon. If your company owns an essential patent and you participate in a related standards committee, you risk your company’s right to enforce the patent. Effectively, your company can lose its intellectual property (IP) rights provided by the patent.
Patents that have to do with a company’s product which complies with a standard can be a different animal, though. Product implementations that use the standard belong to the developer, and if the implementations are copied, the developer can be entitled to assert IP rights.
I have experienced occasions when EDA companies attempted to preserve their essential patent’s IP rights while contributing to a standard. Complicated proposals to license and require cross-licensing were made, but these only caused confusion and derailed progress. Worse, I witnessed instances of companies attempting to pressure or fool their competitors into relinquishing their IP rights.
On the positive side, I have known EDA companies to properly withdraw from standards committees to preserve their IP rights. They have also made conscious decisions to forgo IP rights in favor of a much-needed standard.
What should you do if you are participating on a standards committee and represent a company that has a patent portfolio? Ask your company’s lawyer right away for direction. Standards organizations usually have policies to address patents, and some won’t accept donations of patented technology. Your lawyer can interpret these policies and help your company determine how it wants you to proceed. At one end of the spectrum, your company might choose for you to not participate at all. At the other end, your company may decide to contribute its essential patents to the standards efforts.
The ideal situation in EDA is for all standards (which include formats, languages, databases, and APIs) to be free of IP and patent issues. Either there are no essential patents to begin with, or essential patent owners are willing offer them up if they want to participate in standards creation. Fortunately, the EDA industry hasn’t experienced patent-standard lawsuits to my knowledge, and we should strive to keep it so.
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