|
In the
context of disclosing patents, it is typically appropriate to include the
phraseology of "may be essential" in order to encourage the early disclosure of
patents. Prior to final approval of a standard it may not be possible for
a patent owner to definitively say what is or is not "essential," but if patents
are disclosed that "may" be relevant, then implementers have notice of
potentially essential patents and implementers and patent owners can start
negotiating licenses early on. Although there are risks attendant to
agreeing to licenses before a standard is final, those risks can be reflected in
the greater than reasonable terms that can be agreed to at that
time.
Richard S. Taffet, Esq.
Bingham McCutchen LLP
399 Park
Avenue
New York, New York 10022-4689
T: (212) 705-7729
F: (212) 702-3603
email:
richard.taffet@bingham.com
cell: (914)
582-2477
Hi Don and
Claire,
I propose that the PatCom consider
a minor revision to the definition of Essential Patent Claims. The
current proposed definition uses an unnecessarily vague and broad phrase, “…
the use of which may be essential to create a compliant implementation…”
It seems to me that the phrase “may be essential” is not sufficiently narrow,
and has potential to lead to confusion and/or mischief. This problem can
be solved if we replace “may be” with “is” as follows:
For this purpose, an Essential Patent Claim shall
include any patent claim (including new claims based on a reissue or a
re-exam) and/or patent application claim (including continuations or
divisionals [TBD (not
continuations in part)]), the
use of which is essential
to create a compliant implementation of either mandatory or optional portions
of the [Proposed] IEEE Standard.
This should help prevent confusion
about what claims are required to be licensed.
Thanks.
Regards,
Mike
Sirtori
============================================================================
Bingham McCutchen LLP Circular 230 Notice: To ensure compliance with IRS requirements, we inform you that any U.S. federal tax advice contained in this communication is not intended or written to be used, and cannot be used by any taxpayer, for the purpose of avoiding any federal tax penalties. Any legal advice expressed in this message is being delivered to you solely for your use in connection with the matters addressed herein and may not be relied upon by any other person or entity or used for any other purpose without our prior written consent.
============================================================================
|