Chapter 6: Patents “Essential” to a Technical Standard

SUMMARY OF Chapter 6:

Three topics are discussed in this chapter.

First, the concept of a “patent pool” is explained. Standards bodies – usually public organizations – create technical standards that allow products to work together. Patents cover technology in a standard. If a standard cannot be implemented without infringing a particular patent, then that patent is considered “essential” to a standard. To get into a patent pool, a patent must pass the review of a technical and legal expert, who certifies that the patent is indeed “essential” to a technical standard and thus admissible to the patent pool. The patent pool is organized and administered by private bodies known as “patent pool administrators,” which administer aggregations of essential patents admitted into the patent pool. The concept of “patent essentiality” is explained.

Second, a case is presented of a patent that was found essential and hence admitted into a patent pool. The case presented relates to a patent found essential to the electronic audiovisual standard MPEG-2.

Third, three cases are presented of patents that were found essential and admitted into the patent pool for the cellular technology known as third generation Wideband CDMA (“W-CDMA”). The cases are preceded by a brief discussion of basic information related to power control in a cellular system – this brief discussion will help you understand the three cases.


US 6,885,875: Regulating power in a mobile system


US 6,885,875, essential to the implementation of W-CDMA 3GPP FDD standard for third generation wireless systems, is entitled, “Method and Radiocommunication System for Regulating Power Between a Base Station and a Subscriber Station Using a Power Control Algorithm”. The patent has a priority date of 1998, was issued in 2005, and was assigned initially to the German company Siemens Aktiengesellschaft. Only claim #25 was evaluated and found essential.


There should be only one Point of Novelty (PON) in an independent claim. That seemed to be true in claim #25. However, a surprising thing happened during prosecution of the application. Although the applicant thought the PON was in element number [2] of the claim, the examiner at the PTO presented prior art which showed that element [2] was not new, and the examiner allowed the claim because of a PON in element number [4]. When this shift happened, one of the terms in element [4] became critical to understanding the scope of the entire claim. Unfortunately, this term, which formerly seemed not important but suddenly become a key claim term, is not clearly defined or otherwise explained anywhere in the patent. In fact, depending on how this term is interpreted, the scope of claim #25 may be (1) almost worthless, or (2) moderately reasonable, or (3) extremely broad. As with the Philips case cited above, uncertainty of claim coverage may have contributed to the patent owner’s decision to put the patent into a patent pool.

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