Negotiating Patent Industry Standard Agreements



About the Course:

This session will provide insight into the inner workings of Patent Industry Standards as applied to licensing and law suits. Background of various standard setting authorities–such as the ASME, IEEE, and the ANSI–will be provided. Exemptions to anti-trust law will be expounded upon. Examples of industry standards efforts that pass legal muster (and those that don’t) will be the subject of part of this webinar. Issues that arise in litigation relative to industry standards–such as equitable estoppels, implied license, patent misuse, and inequitable conduct–will be discussed. Among the other issues discussed during this webinar are:

  • Negotiating royalty rates in the context of inclusion in standards groups
  • Complying with the notion of “fair and non-discriminatory use”
  • Operating within the parameters of “free to use”
  • Duty of disclosure of IP
  • Positioning your company for optimum advantage at the initial working group meetings
  • How to best handle provisional applications within the context of involvement in standards meetings
  • Understanding state contract law on promissory estoppels
  • Risk of compulsory licenses
  • Methods to avoid Duty to License
  • How to assert a patent against a standard
  • Choosing the best forum for asserting patents vis-a-vis industry standards

Course Leader: David Healey, Partner, Fish & Richardson

Mr. Healey has been litigating complex cases in Federal and State Courts for twenty-five years, and has been focused on patent litigation and related antitrust and tort claims since 1994. Mr. Healey has tried cases in the Federal Courts, International Trade Commission, International Chamber of Commerce (Arbitration), American Arbitration Association, NASD Arbitration Forum, and private arbitration. He has argued appeals in the Federal Circuit, Fifth Circuit and Fourth Circuit Courts of Appeals, as well as the Texas Supreme Court and Texas Intermediate Courts of Appeals. Mr. Healey has been actively involved in planning and executing multi-jurisdictional strategies involving courts in the U.S. and Europe, and administrative agencies (including re-examination in the US PTO, invalidity and declaratory judgment actions in Europe, and state regulatory matters). Mr. Healey has worked on patent and antitrust issues with the Federal Trade Commission, and has represented clients patent related competition matters before the Federal Trade Commission as well as the European Union.

Mr. Healey is the author of the highly informative blog, PatentMath.

Course Length: Approx. 1.5 hours

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