Excerpts from TECHNOLOGY PATENT LICENSING

TECHNOLOGY PATENT LICENSING:

An International Reference on 21st Century
Patent Licensing, Patent Pools and Patent Platforms

Detailed Table of Contents

 

Chapter 1: “Introduction to the Licensing of Standardized Technology”

  1. Introduction
  2. What is “FRAND” Licensing?
  3. How has one standards body dealt with FRAND?
    1. Recent developments within ETSI
    2. Key issues considered by ETSI
      1. Issue 1: How to define “FRAND”?
      2. Issue 2: How to deal with Non-Disclosure Agreements (“NDAs”) demanded by the holders of essential patents?
      3. Issue 3: How to deal with inadequate disclosures of essential IPR?
      4. Issue 4: Should a standards organization mandate terms for geography, and if so, which terms?
      5. Issue 5: What should be the forms of the “Declaration of Essential IPRs”?
    3. Concluding observations on the ETSI approach
  4. The General Problem Not Yet Resolved
  5. The Patent Problems in the 3G Mobile Industry
    1. Background
    2. Deficiencies in Patent Licensing for 2G Systems
    3. The 3G Standards Battles:
    4. Specific IP Concerns for 3G Systems
    5. Estimated Size of the 3G Patent Market
  6. Conclusions
Figures:
Figure 1.1.
Objectifying FRAND: The Structural Missing Link between Standards Making and Products
Figure 1-2.
IMT-2000 Family of 3G Standards

 

Chapter 2: “A Comparison of Licensing Methods”

  1. Introduction
  2. The Three Kinds of Patent Licensing: Bilateral Licensing, the Patent Pool, and the Patent Platform
  3. How is Platform Licensing Unique?
  4. A Comparison of Patent Pools and Platforms
  5. The Evolution of Patent Licensing: The Telecom Paradigm
    1. The Past: Bilateral Licensing (and some Patent Pools)
    2. The Present: Bilateral Licensing and Patent Pools
    3. The Future: Bilateral Licensing, Patent Pools, and Patent Platforms.
  6. Conclusions
Figure and Table:
Table 2-1.
Comparison: Bilateral Licensing, the Patent Pool, and the Patent Platform
Figure 2-1.
Patent Licensing Options to Provide Flexibility in Licensing

 

Chapter 3: “The Determination of Essentiality”

  1. Introduction
  2. Requirements of the Evaluation Process
  3. The Evaluator: Evaluation Service Provider (“ESP”)
    1. The Generic Problem
    2. The Specific Problem
  4. The Evaluation Procedure and Structure
  5. Issues Reviewed and Decided for the Evaluation Process
    Issue 1: Aggregation of Claims
    Issue 2: Translation
    Issue 3: Patent Families
    Issue 4: Number of Claims Per Application
    Issue 5: Confidentiality
    Issue 6: Publication of Results
    Issue 7: Doctrine of Equivalents
    Issue 8: Who May Be and Evaluator?
    Issue 9: Composition of the Evaluation Panel
    Issue 10: How are Specific Evaluators Chosen for an Evaluation Panel?
    Issue 11: Intervention by Experts
    Issue 12: Third-Party Interventions
    Issue 13: Third-Party Applications for Evaluation
    Issue 14: Optional and Mandatory Standards
    Issue 15: Re-Evaluations
    Issue 16: Structure of a Certified Patent with a New Standards Release
  6. The 3G Patent Platform Evaluation Process
  7. Key Aspects of the Evaluation Process (Part 3)
    1. Definition of “Essential”
    2. The Patent Evaluation Process
    3. Confidentiality of the Patent Application
    4. Publication
    5. Declaration of Essentiality
    6. IPEC Output Documentation
    7. Choice of Patent Law Firms
    8. The Evaluations
  8. Guidelines and Rules for Making an Application (Part 2)
  9. Differences in National Laws
  10. The Application Form (Part 1)
  11. Conclusions
Figures and Table:
Figure 3.1
Deliverables from the Evaluation Process
Figure 3.2
Structure of the International Patent Evaluation Consortium
Figure 3.3
Evaluation Procedure
Figure 3.4
Evaluation Structure
Table 3-1
Some Fundamental Issues for Resolution in Defining an Evaluation Process

 

 

Chapter 4: “The Licensing Dilemma: What’s Fair? What’s Reasonable?”

  1. Introduction
  2. The Three Legal Documents
  3. Key Concepts and Definitions in the Three Legal Documents
    Introduction
    Concept 1: Product Categories
    Concept 2: Base Multiplier
    Concept 3: Ex works Sales Value
    Concept 4: Reference Market Value
    Figure 4.3. Two Types of Terminal Products: The Rationale for the RMV
    Figure 4.4. A 3G Functional Element in a Complex Wireless Terminal
    Concept 5: Maximum Cumulative Royalty
    Concept 6: Standard Royalty Rate
    Concept 7: Cumulative Royalty Rate
    Concept 8: Total Royalties
    Concept 9: Collection Point
    Concept 10: Review and Adjustment Procedure
  4. Summary of Platform Licensing Rules
  5. Framework Agreement (“FA”) – The First Legal Agreement
  6. Standard License Agreement (“SLA”) – The Second Legal Agreement
  7. Interim License Agreement (“ILA”) – The Third Legal Agreement
  8. Unique Licensing Terms of PlatformCo W-CDMA
  9. Conclusions
Figures:
Figure 4.1
UMTS Architecture: Origins of the Product Categories
Figure 4.2
Generic 3G Architecture
Figure 4.3
Two Types of Terminal Products: The Rationale for the RMV
Figure 4.4
A 3G Functional Element in a Complex Wireless Terminal

 

 

Chapter 5: “Antitrust Liability: The Lurking Fear”

  1. Introduction
  2. A Quick Survey of the Relevant Law
    1. U.S. Law and the Antitrust Division of U.S. Department of Justice (“DOJ”)
    2. European Law and the Competition Directorate of the European Commission (“EU”)
    3. Japanese Law and the Japanese Fair Trade Commission (“JFTC”)
  3. The Letters Requested by the 3G3P
  4. A Short History of the Interaction Between the 3G3P and the Regulatory Authorities
  5. The U.S. Department of Justice and the Platform
    1. A Very Brief Survey of Some of the U.S. Law Relevant to the Business Review Letter
    2. Background to the BRL Granted by the DOJ
    3. A Detailed Review of the BRL Granted by the DOJ
  6. The European Commission and the Platform
    1. A Very Recent Change in the EC Law Related to Comfort Letters
    2. A Very Brief Survey of Some of the European Community Law Relevant to the Comfort Letter
    3. A Detailed Review of the Press Release Issued by the EC
  7. The Japanese Fair Trade Commission and the Platform
    1. A Very Brief Survey of Some of the Japanese Law Relevant to the Viewpoint Letter
    2. The JFTC Viewpoint Letters
  8. Conclusions
Table:
Table 5-1:
General Competition Law in the Relevant Jurisdictions

 

Chapter 6: “Introduction to the 3G Patent Platform Initiative”

  1. A Brief Introduction to the Platform Initiative
    1. The Patent Problem
    2. The Solution – The 3G Patent Platform
    3. The New Paradigm
    4. Industry-Defined
    5. Background Considerations
  2. Background History of the Platform
    1. Business Context (1998-2003)
    2. Industry IPR Initiative
      1. Definition Phase
      2. Implementation Phase
      3. Commercial Phase
  3. Paradigm Cases for Interested Parties
    1. The Paradigm Case for a Licensor
    2. Benefits to the Licensor
    3. The Paradigm Case for a Licensee
    4. Benefits to the Licensee
  4. Conclusions
Figures and Tables:
Figure 6.1
Definition of FRAND for 3G Standardized Technology
Figure 6.2
Industry Realization of the Platform Concept (Timeline)
Table 6.1
Entities participating in some or all of the definition activities during both the Definition Phase and the Implementation Phase
Table 6.2
Companies and Associations Affiliated with the 3G3P During the Implementation Phase
Table 6-3
Basic Platform Legal Structure

 

 

Chapter 7: “Structure, Function and Governance”

  1. Introduction
    1. Antitrust Influence
    2. Main Functional Figures
    3. Rationale for Choosing a Specific Type of Legal Structure
  2. Platform Company (PlatformCo)
    1. Mission
    2. Key Objectives and Activities
    3. Structure, Governance and Membership
    4. External Service Providers
    5. Status of Implementation
  3. 3G Patents (Common-Service Company)
    1. Mission
    2. Key Objectives and Activities
    3. Structure, Governance and Membership
    4. External Service Providers
    5. Status of Implementation
  4. Evaluation Service Provider: IPEC
    1. Structure and Governance
  5. Business Significant of the Platform Structure in a Competitive Market
  6. Conclusions
Figures:
Figure 7.1
Platform Structure Showing Service Providers
Figure 7.2
3G Patents’ Business Model
Figure 7.3
Platform Impact on the Equipment Cost Model
Figure 7.4
Using the Platform as a Competitive Tool: Establishing a Royalty Rate for Competitive Advantage
Figure 7.5
A Low Royalty Rate Option Generates Greater Royalty Income
Figure 7.6
Overall Structure of the Platform
Figure 7.7
User Access to Platform Services

 

 

 

Chapter 8: “Guidelines for Developing An Organized Patent Licensing Arrangement for Standardized Technology”

  1. Introduction
  2. The Problem: Fragmented IPR in the Network Economy
  3. A Solution: Ten Steps to an Organized Patent Licensing Arrangement
    Step 1: Initiate
    Step 2: Recruit First Players and Establish the Structure
    Step 3: Identify Goals
    Step 4: Define a Framework
    Step 5: Conduct Independent Patent Evaluations by Credible Experts
    Step 6: Develop the Licensing Arrangements
    Step 7: Define Structure and Governance
    Step 8: Organize for Practical Implementation
    1) Implementing Companies
    2) Tasks for Implementation
    Step 9: Obtain Antitrust Approvals
    Step 10: Conduct Operations, Commercial Launch, and Modifications
    1) Operations
    2) Commercial Launch (Marketing and Sales)
    3) Modifications
  4. Tax Planning
    1. Option I
    2. Option II
    3. Option III
  5. Some Short Practical Guidelines Based on the Platform’s Experience
    1. Issues Related to Evaluation
      1. The People
      2. The Evaluation Process
      3. The Documentation
    2. Issues Related to Licensing
      1. Terms and Conditions
      2. The Pool, the Platform or Something In-Between
    3. Issues Related to Antitrust Law and Policy
      1. Integration of Complementary Patents
      2. The Grantback License
      3. Control by Licensors
      4. Certain Services May Be Centralized
      5. Membership Rules
      6. Independent Patent Availability
  6. Conclusions
Figures:
Figure 8.1
General Mode for Timely Market Access Through Organized Patent Licensing
Figure 8.2
Innovation of New Products: Bringing Together Licensors and Licensees Through Organized Patent Licensing

 

Appendices

    1. Evaluation Process (defined by the partners of 3G3P)
      Evaluation Process (Part I): Application Form
      Evaluation Process (Part II): Guidelines and Rules
      Evaluation Process (Part III): Policy for an Essentiality Evaluation
      and Certification
    2. Framework Agreement (FA)
    3. Standard License Agreement (SLA)
    4. Interim License Agreement (ILA)
    5. Detailed Example of Royalty Rates (SRR adjustment)
    6. U.S. Department of Justice, Business Review Letter for the 3G Patent Platform
    7. E.C. Press Release Concerning 3G Patent Platform
    8. JFTC Two Viewpoint Letters, December, 2000, and June, 2002 (English language translation from Japanese original)
    9. United States Code of Federal Regulation (CFR), Title 28, Part 50, Section 6
    10. U.S. Department of Justice, Business Review Letter for the MPEG Patent Pool
    11. U.S. Department of Justice, Business Review Letter for the DVD-1 Patent Pool
    12. U.S. Department of Justice, Business Review Letter for the DVD-2 Patent Pool
    13. U.S. Department of Justice Press Release for the 3G Patent Platform
    14. E.C. Press Release Concerning the DVD-2 Patent Pool
Glossary
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Chapter Summaries

Chapter 1: “Introduction to the Licensing of Standardized Technology”- Click Here

Chapter 2: “A Comparison of Licensing Methods”- Click Here

Chapter 3:  “The Determination of Essentiality”- Click Here

Chapter 4: “The Licensing Dilemma: What’s Fair? What’s Reasonable?”-Click Here

Chapter 5: “Antitrust Liability: The Lurking Fear”- Click Here

Chapter 6: “Introduction to the 3G Patent Platform Initiative”- Click Here

Chapter 7: “Structure, Function and Governance”- Click Here

Chapter 8: “Guidelines for Developing An Organized Patent Licensing Arrangement for Standardized Technology”- Click Here