What Are Patent Pools and What Purposes Do They Serve?
Development of a wide range of technologies are based on technical standards adopted by industry organizations in coordination with the companies responsible for the development of the technology and the products that ultimately incorporate and apply the industry standard. Early adoption and consistent application of industry standards for a technology allows consumers to have confidence that products incorporating the standard will be interoperable with each other and any content conforming to the standard and produced for use with those products. A large number of patents may be developed in critical industries including those that develop products governed by industry standards. The thicket of patents from many technology and product developers may significantly complicate efforts to efficiently obtain licenses necessary to develop and bring to market products incorporating the industry standard and can slow adoption of the industry standard.
To facilitate adoption of an industry standard and to create efficiencies in granting and obtaining licenses to standards essential patents, licensors sometimes aggregate patents that cover a particular industry standard into a so-called patent pool. By aggregating standards essential patents, patent pools can significantly lower transactions costs for licensors and licensees by creating a one stop marketplace for standard essential patents that may lower barriers to entry and speed adoption of the industry standard.
Antitrust regulators may apply significant scrutiny to arrangements between industry competitors, but have looked favorably on past patent pools that are limited to standard essential patents. Thus, patent pools typically require essentiality to the industry standard before allowing a patent to be added to the patent pool, specifically assessing whether that patent is necessarily infringed by practicing the industry standard. Compliance with antitrust guidelines may require an independent evaluator distinct from the licensors and the patent pool to make the determination of whether a patent is essential to a particular industry standard, and therefore eligible for inclusion into a particular patent pool.
Barceló, Harrison & Walker LLP has extensive experience serving as independent patent evaluator for patent pools in video, audio and wi-fi technologies as well as technical experience in many other technologies. For example, we have served as worldwide independent patent evaluator for a leading HEVC (H.265) patent pool from patent pool development through pool growth to over 15,000 patents, managing supporting counsel in China, Europe, Japan and South Korea.
Patent pool clients and antitrust counsel can rely on our past experience in supporting patent pool growth while avoiding antitrust issues. We have considerable experience in establishing and executing processes for patent submission and for delivering timely, efficient, cost-effective and legally defensible essentiality determinations as to which submitted patents should be permitted entry into the patent pool as essential to the industry standard and which should be rejected as non-essential. We can bring to bear our best practices developed from years of experience in multiple patent pools to help future clients develop and implement appropriate and defensible processes that efficiently scale as your patent pool grows.
Please direct any inquiries about our independent patent evaluator services to our managing partner for patent pools.
David B. Walker
J.D., Stanford Law School
M.S.A.A., Stanford University
B.S.A.E., U.S. Naval Academy
Why Choose Us
We have extensive experience in a wide range of legal and business issues related to intellectual property. Each of our partners holds both advanced engineering and legal degrees from prestigious universities, and has supplemented his academic credentials with years of technical experience. We combine top-tier big law firm and Fortune 500 in-house expertise and experience with the attitude and responsiveness that is only available from a high-caliber boutique law firm.