Thursday, 30 May 2013

"Commercially essential" patents: an explanation

Reporting on the Enforcement session in yesterday's Best Practices in IP 2013 conference (see earlier post here), this blogger confessed himself to be unaware of the term "commercially essential patent", in contrast with technically essential patents which form the bedrock of technical standards. Speaker Luc Savage (Orange) has kindly emailed to explain the term in greater detail:
"Although applicable for non-standard related pool, in standard related pool, an Intellectual property right, such as a patent, licensed by the pool for a royalty must be essential to the standard. There are two approaches to the definition of “essentiality”. 
The first more rigorous approach, “technically essential”, provides that the specification of the standard must read on the patent claim(s) in order to make a standard conformant product, i.e. there is no technical alternative to circumvent the patent claims, otherwise the patent would not be essential. 
The second broader approach, “commercially essential”, provides that the patent will be considered essential if, “as a practical matter”, it would be infringed in making a standard conformant product, but there would be alternative implementation(s) where the patent would not be infringed. The notion of “commercially essential” is not well defined today, but I thought it was useful to address this new approach to patent pool".
Thanks, Luc, for taking the trouble to clarify this!

1 comment:

Anonymous said...

No difference in the conveyed meaning from that captured in typical definition of ‘necessary claims’ such as in USB 3.0 CONTRIBUTORS AGREEMENT excerpted below?

1.8 “Necessary claims” means claims of a patent or patent applications that (a) are owned or controlled by a party, now or at any future time; and (b) are necessarily infringed by implementing those portions of the Final Specification within the bounds of the Scope, wherein a claim is necessarily infringed only when it is not possible to avoid infringing it because there is no commercially reasonable non-infringing alternative for implementing such portions of the Final Specification within the bounds of the Scope. . . .