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

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

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

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

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

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

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

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

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

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