Jorge Contreras is a professor at the Washington College of Law at American University and a contributor at Patent Progress. He also happens to be one of the world’s foremost legal authorities on the U.S. patent system, particularly in areas of patent law and policy that focus on standards bodies.
Recently, I interviewed Jorge to discuss his new paper, “Patent Pledges” and talk about a new venture that he has been leading aimed at cataloguing the myriad of patent commitments made outside the confines of standards bodies on which market participants rely.
Dan O’Connor (DO): As you have noted in your academic writing, patent pledges have been getting more attention lately – especially in connection with the smartphone wars. Can you briefly explain the different types of patent commitments and their purpose?
Jorge Contreras (JC): First are commitments made in formal standards-development organizations (SDOs). These commitments are often required by SDO rules and require a patent holder to declare that it will license its patents that are essential to a standard on terms that are “fair, reasonable and non-discriminatory” (FRAND). The ongoing litigation involving Microsoft, Motorola, Apple, Samsung and other companies involves SDO-based FRAND commitments.
But companies make patent commitments outside SDOs as well. For example, last year Apple, Google and Microsoft all committed to the US Department of Justice that, under most circumstances, they would refrain from seeking injunctions to enforce standards-essential patents that were subject to FRAND commitments. The DOJ relied on these commitments in approving some very large patent acquisitions that were under review. The commitments weren’t embodied in a written agreement or a consent decree, but they were certainly viewed as binding by the DOJ.
Even more interesting are pledges that are being made by companies voluntarily in order to promote the adoption of certain standardized technologies and platforms. For example, several companies have publicly stated that they will not assert their patents against implementations of the Linux operating system. IBM publicly pledged not to assert 500 patents against open source software, and Google has made a multi-patent “Open Patent Non-Assertion Pledge”. In addition to these “non-assertion” pledges, some companies have committed that they will license patents on FRAND terms. One such pledge is contained in Microsoft’s Interoperability Principles, which relates to a number of open protocols.