Standards-Related Patents and Standard-Setting Organizations

Navigating the Challenges of SSOs: Licensing, Disclosure and Litigation

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, October 16, 2012

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Course Materials

This CLE course will provide guidance to patent counsel on standards-related patents and standard-setting organizations (SSO). The panel will offer strategies for licensing, meeting disclosure requirements, and navigating standards-related litigation.


Patent owners work together to facilitate interoperability of products through SSOs and patent pools. SSOs help develop industry standards for particular technologies, and patent pools offer a package for licensing essential patents to make a standardized product.

Counsel to licensors considering participation in SSOs should be mindful of SSO constraints. Counsel can provide guidance on license terms limitations and disclosure policies that protect a company from revealing technology before it has secured patent rights to that technology.

The ongoing smartphone patent challenges and litigation demonstrate the unique complexities involving standards-related patents that don't exist outside of that context. Counsel must take steps to overcome standards-related patent challenges to protect clients' patent rights.

Listen as our authoritative panel of IP attorneys examines the challenges of SSOs, including licensing, disclosure requirements, and litigation. The panel will offer best practices for navigating these challenges and protecting patent rights.



  1. Licensing
    1. Type of license
    2. Reasonable and non-discriminatory terms
    3. Royalty free terms
    4. Negotiating standards-essential patent claims
    5. Cross licensing
    6. Refusals to deal
    7. Antitrust concerns
  2. Disclosure requirements
    1. Understanding individual policies of particular SSO
    2. Evaluating if/when to meet disclosure requirements
    3. Failure to disclose
    4. Court treatment
  3. Standards-related litigation
    1. Potential defenses against patent infringement in the context of SSOs
    2. Court treatment


The panel will review these and other key questions:

  • What constraints are placed on a licensor that participates in an SSO?
  • What factors should patent holders consider when determining if and when to meet an SSO's disclosure requirements?
  • What defenses against patent infringement in the context of SSOs should counsel employ?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Thomas J. Scott, Jr.
Thomas J. Scott, Jr.

Goodwin Procter

He chairs the firm's Intellectual Property Group and focuses on all aspects of intellectual property including patent...  |  Read More

April Weisbruch
April Weisbruch

Goodwin Procter

She is a certified patent attorney in the firm’s Business Law Department and a member of its Intellectual...  |  Read More

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