1. Stefano Barazza has published a paper titled Licensing standard essential patents, part one: the definition of F/RAND commitments and the determination of royalty rates in 9 J. Intell. Prop. L. & Prac. 465-81 (2014). Here is the abstract:
The development of standards contributes to the diffusion of innovation, allowing companies to access the latest technology developed by third parties, and consumers to benefit from the availability of interoperable products at lower costs. Standardization, however, confers increased market power to the holder of a patent which is essential to practicing the standard, a situation which may potential generate anti-competitive effects, especially if the patent holder threatens to hold-up prospective licensees in order to obtain the payment of royalty rates higher than the pre-standardization value of the patent. To minimize this risk, standard-setting organizations commonly require the holder of standard-essential patents to commit to licensing them on fair, reasonable, and non-discriminatory terms (F/RAND). Courts, therefore, are often challenged with the tasks of evaluating the F/RAND nature of royalty rates and licensing terms, and assessing whether the patent holder is entitled to obtain injunctive relief against a prospective licensee. Although the principles that inspire the interpretation of F/RAND commitments appear to be shared worldwide, case law does not yet reflect this uniformity. The harmonization of the rules and methodologies applied by the courts, and the implementation of more comprehensive policies by the standard-setting organizations, appear to be key steps towards ensuring the right balance between the rights of patent holders and licensees.
2. Bernard Chao has published a paper titled The Infringement Conundrum in 35 Cardozo L. Rev. 1359 (2014), available here. Here is the abstract:
For many years, patent law has struggled with the issue of permissible claim scope. A patent’s specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations, suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after-arising technology.
Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill suited for patent law. Under these doctrines, as a claim encompasses subject matter further and further away from what the specification describes, there is a point where the inventor suddenly loses all rights. These outcomes make sense when all trespasses are considered equal wrongs. However, in reality, there is an infringement continuum. At one end of the continuum, infringement can look exactly like the invention described by a patent. That infringement should be treated far more seriously than infringement that resides at the other end of the continuum and looks very different from the invention.
Consequently, I propose a new theoretical framework that ties patent disclosure doctrine to the remedies the law provides. Although I would continue to use the claims to determine infringement, I suggest that the specification be used to assess the remedy. Specifically, I suggest replacing the current lost profits/reasonable royalty framework with one based on royalties that consider disclosure principles. The size of the royalty would be determined by comparing the infringement to the patent specification and adjusting the royalty based on the degree of similarity.
The proposal improves on existing doctrines in two fundamental ways. First, instead of offering binary outcomes, the proposed remedies are highly adjustable. Therefore, they are well suited for addressing the full infringement continuum. Second, this proposal does not just focus on the patentee’s injury, as does the current law. Rather, it advances the public interest by optimizing incentives for both initial and follow-on innovators.
3. Richard F. Dole, Jr. has published a paper titled Statutory Royalty Damages Under the Uniform Trade Secrets Act and the Federal Patent Code in 16 Vanderbilt J. Enter. & Tech. L. 223 (2014), available here. Here is the abstract:
Optional statutory royalty damages are provided for by both the version of the Uniform Trade Secrets Act that has been enacted by most of the forty seven adopting states and the federal patent code remedies for infringement of utility patents. Notwithstanding periodic recommendations that the Uniform Act follow the patent code concept of statutory royalty damages, this article takes the position that differences between the Uniform Act and the Patent Code regarding monetary remedies make it reasonable for the Uniform Act statutory royalty provisions to be construed more objectively than their federal counterpart. This will preclude statutory royalty damages acquiring the unwarranted significance under the Uniform Act that they have acquired under the Patent Code.