Proscribed conduct for patent holders participating in standard-setting organizations

Standard-setting organizations (SSO)are a common vehicle for technology industries to establish policies and standards that enhance interoperability, benefiting industry participants and consumers. Often, participants are requested to disclose their intellectual property (IP), such as patents, that might have a bearing on the standards. This article explores the evolving law on the obligations that participants have and provide guidance on what type of conduct should be avoided regarding the disclosure of IP. Early cases indicate that, even absent an explicit disclosure policy, failure to disclose intellectual property right (IPR) in an SSO setting may result in a successful equitable estoppel defense denying future patent enforcement efforts. More recent cases have illustrated that, when there is an IPR disclosure policy, the duty to disclose is even clearer. However, the growing divergence between the perspectives of the FTC and the federal courts as to what constitutes appropriate disclosure for participants in SSOs and the consequences for nondisclosure is causing substantial confusion.