From Patent Hold-Up to Patent Hold-Out?

1. Introduction

Standardization aims to define standards, which are technical rules. The process² is driven by the Word Trade Organization (“WTO”)’s principles of transparency, openness, impartiality and consensus, effectiveness and relevance, coherence³. Firms that may compete at a later stage collaborate by pooling human, financial and/or technical resources to have the best technological solution adopted as next standard. Once the standard has been adopted, it is made public and available to anyone wishing to implement it, whether or not they are a member of the standard-setting organization that has developed the standard. Besides interoperability and compatibility, even between competing devices (EC regulation No. 1025/2012 on standardization), standards in telecommunications also guarantee high performance (Fraunhofer Study 2011).

For the reasons mentioned above, standards are considered as a tool encouraging innovation, technology dissemination and competition. Nonetheless, standardization is closely linked to intellectual property rights (“IPRs”) and competition issues. Companies involved in standardization may hold patents. Unlike standards, which are available on an open and non-discriminatory basis, patents are exclusive rights granting their owners the power to block other parties from using the patented invention⁴. While both aim to encourage innovation, patents and standards can appear incompatible at first sight. Even more so when patents are qualified as “standard-essential patents” (“SEPs”), as no technical alternative to these patents exist. Accordingly, each product or service implementing the standard without a license will therefore necessarily infringe the SEPs⁵.

As a result, SEPs in principle confer their holders an increased market power by allowing them to control the standardization process and the downstream market (Shapiro 2001, Farrell et al. 2007). Consequently, in the absence of any safeguard, standardization could lead to behaviors impeding competition, as hold-up or royalty-stacking. Patent hold-up refers to the situation where SEP holders abuse their bargaining power to extract excessive royalty rates from their SEPs, potentially under the threat of an injunction. Such rates, if they are accepted by the implementer, may hamper the diffusion of the standard, as they could be financially burdensome and restrict access to the standard by implementers: the implementer will either have to accept rates “far in excess of the patent holder’s true contribution”, which are similar to a tax on products incorporating innovation; or to postpone the sale of products/services incorporating the standard to avoid paying excessive fees or costly litigations (Lemley & Shapiro 2007). Royalty stacking occurs when the cumulative royalty rate for all the patents needed for the standard is excessive: even if each SEP holder demands a reasonable fee, due to the large numbers of SEPs to implement, the aggregate royalty rate for all SEPs exploited in the standard may reveal itself excessive and non-bearable (Lemley & Shapiro 2007)⁶.

Yet, SEPs play an important role in standardization. Companies holding SEPs are those contributing the most to the development of the standard (on contributors: cf. ABIresearch 2013, on SEP holders: cf. Fraunhofer Study 2011). Since standard-setting organizations (“SSOs”) seek to “balance between the needs of standardization for public use in the field of telecommunications and the rights of the owners of IPR”⁷, they have enacted IPR Policies to avoid anticompetitive behaviors while adequately rewarding SEP holders for their contribution to the standard. At the same time these policies shouldn’t lead to a counter-abuse on the implementer’s side.

One relevant part of the SSO’s IPR Policies is the (F)RAND commitment. Through this commitment, SEP holders agree to share their SEPs accessible on (fair), reasonable and non-discriminatory terms and conditions to any party requiring such a license, instead of keeping the technology covered by such SEPs proprietary. The purpose is to prevent any patent hold-up.