Patent Pools and Standards

Due to the incredible financial success of the MPEG-2 patent pool, companies have realized the potential for significant royalties from patents that read on standards and are part of a patent pool. Oblon Spivak has extensive experience obtaining patents that read on standards in a variety of technology areas including telecommunications, digital video encoding, optical discs including CDs, DVDs and Blu-ray, and wireless. It is a complex area of patent law, in which certain types of claims are far better suited than others to read on standards. For example, it may be harder to have an encoder claim declared essential if the standard emphasizes the bit stream structure or format and the manner of decoding. Also, there are potential disadvantages to having only claims that recite both the transmitting and receiving functions. Our Patent Pools and Standards practice has proven experience in the drafting of claims in view of standards documents, enabling us to ensure that our clients secure issued patents containing claims that are essential to the practice of a standard.

Patent pools allow patentees to receive licensing revenue for their patents, usually without the need for time-consuming licensing negotiations or administration of the royalty collection process. The patent pool's licensing administrator can relieve the patent owner of the burden of signing up licensees, negotiating license terms with each licensee, monitoring royalty reporting, investigating payment cheating, and collecting royalties. Our firm has extensive experience in the most difficult aspect of joining a patent pool – having patents declared essential to the standard. We have extensive experience with patent pool evaluators, and know what it takes to have a patent declared essential. We also have experience in working with other companies in a joint effort to start a patent pool.

Further information regarding patent pools and standards can be found in our Frequently Asked Questions section.

For more information on patents that cover standards and patent pools, please contact James Kulbaski (jkulbaski@oblon.com).