Sunday, March 4, 2007

Protecting standards from embedded patents

In a prior blog, I discussed patent farming within standards. I promised another blog with suggestions for SDOs (Standard Development Organizations) that would reduce the risk that their standards were victimized by patent farming.

Here is the list:

1. Work closely with the USPTO (US Patent and Trade Office) or the EPO (European Patent Office) to block trivial or non-original patents applied to your standard. Take advantage of the USPTO peer to peer project.

2. Collect and publish a list of prior art for all the methods included in your standard

3. Where no prior art exists, develop and publish your own "prior" art as open source projects

4. Do your own careful patent search to ensure that your standard does not include any previously patented methods

5. Require your members to search their company's patents to ensure that they have no patents within the standard.

6. The patent searches conducted by companies that are members of the standards committee should include all patents transferred to patent holding

7. Require members of the standards committee to sign agreements (co-signed by authorized representtives of their companies) that no company patents (held or transferred) or claims will apply to the standard.

8. Whenever possible, use open, or public domain, or old (> 20 years) methods within your standards.

9. Whenever possible, use "escape" methods in the standard so that users are not locked into a single method that implements the standard

10. Make optional standards, not required standards, so that the user community is not locked into one implementation

11. Make interoperable standards (that can port to-and-from related standards)

12. Make specifications, not standards (to be explained in a later blog - JB)

13. Have open [to the public] committee meetings and publish the minutes of your meetings

14. Include a "user advocate" in the standards committee

15. Publish the efforts you have made to comply with some or all of the suggestions in items 1 through 14.

16. As a user, whenever possible, use standards that were developed with most of the suggestions from this list. Remember, it is the user (not the SDO) that will pay for patents embedded within standards.

Nothing can reduce your risk to zero, but following these items can help. I will be writing future blogs that explain specific items from the list.

- Jules Berman

tags: embedded patents, european patent office, hidden patents, medical standards, patent farming, prior art, sdo, specifications, standards development organizations, trivial patents, uspto
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