Book Review: Patent Pledges, Global Perspectives on Patent Law’s Private Ordering Frontier

This Kitten is pleased to put her paws on the book, Patent Pledges, Global Perspectives on Patent Law’s Private Ordering Frontier, coedited by Jorge L. Contreras (Associate Professor at the University of Utah) and Meredith Jacob (Assistant Director at the American University Washington College of Law).

During recent years, patent pledges (voluntary commitments made by patent holders for limiting, in the words of Jorge L. Contreras, “the enforcement or other exploitation of their patents”) have increasingly captured the attention of academia, practitioners, and parties involved in technology development and standardization, with FRAND (fair, reasonable, and non-discriminatory) licensing as “the best-known category of patent pledge” nowadays.

The book describes the landscape of patent pledges from diverse perspectives and jurisdictions. It resulted from a workshop and academic symposium organized by the editors in 2014 and 2015, which inter alia were motivated by the creation of the Online Patent Pledge Database by Jorge L. Contreras while he served on the faculty of American University Washington College of Law.

The book is divided into five parts. Part I provides an overview of patent pledges. First, Jorge L. Contreras discusses the classification of patent pledges based on different factors, such as the industry in which the pledgor operates (e.g. information and communication technology -ICT- and open source software), the subject and scope of the pledges (e.g. non-assertion patent, royalty free patent or FRAND licensing), the origin of the pledge (coordinated or unilateral pledge), and the motivations for pledging (e.g. inducement or philanthropy). Duane R. Valz, Dov Greenbaum and Bassem Awad each follows up by providing insights into patent pledges in the open source software, biotechnology, and green technology sectors, respectively.

Part II covers the enforcement of patent pledges from different perspectives. Elizabeth I. Winston analyzes several investigations based on patent infringement carried out by the U.S. International Trade Commission. Meanwhile, Catharina Maracke and Axel Metzger discuss the enforcement of patent pledges under German law. An academic perspective is provided by Jorge L. Contreras, who explains the limitations for enforcing patent pledges in the context of the contractual paradigm, the promissory estoppel, and other theories, concluding that the market reliance theory is the “more robust and reliable means” for prosecuting the breach of a patent pledge.

Part III analyzes patent pledges from the perspective of competition law in different jurisdictions. Matthew W. Callahan and Jason M. Schultz analyze open patent agreements (OPAs) as alternative means for incentivizing innovation in the context of the U.S. antitrust law. Rafael Sikorski discusses the enforcement of patent pledges under the EU competition law, Ricardo Sichel under the Brazilian competition law, Elizabeth Xiao-Ru Wang under the Chinese competition law, and Sang-Seung Yi and Yoonhee Kim under the Korean competition law.

Part IV, which this Kat found particularly interesting, covers the impact of patent pledges on innovation. Clark D. Asay examines patent pledges as an informational tool and discusses whether it hampers the current patent system. Mariateresa Maggiolino and Maria Lillà Montagnani analyze whether all kind of patent pledges fit within the open innovation (OI) movement. Liza Vertinsky highlights the role of patent pledges in the cloud, describing the approaches taken by computing platforms such as OpenStack, Google Cloud Platform, and Microsoft Azure. Tania Sebastian analyzes patent pledges as means for fostering innovation in developing countries.

The last Part of the book is dedicated to discussing the future of patent pledges. Timothy S. Simcoe addresses the motivations and structure of patent pledges, as well as the value of having a patent pledge registry. Jorge L. Contreras proposes the creation of a patent pledge registry by examining in detail its benefits and three types of usage regimes for pledges (voluntary, mandatory, voluntary but with incentives), with the goal of avoiding “ambiguity regarding [the] scope [of patent pledges] at the time [they were] made”. Nicole Shanahan offers some suggestions regarding the information that must be contained in the electronic records of patent pledges. Finally, Meredith Jacob suggests a set of best practices for both pledgors and pledgees with the aim of improving “the usefulness and enforceability of patent pledges”.

Some selected patent pledges made by Tesla Motors, IBM, Google, Myriad Genetics, Monsanto, Red Hat, and Microsoft are included in the appendix of the book.

Patent Pledges, Global Perspectives on Patent Law’s Private Ordering Frontier, is a must-read for anyone involved in technology development and standardization. The authors analyze the complexity of patent pledges in a clear and concise manner. Moreover, even though the book is addressed to practitioners in the field of IP licensing, litigation, technology development, and standardization, the way in which the content is addressed makes the book useful as well for scholars in various fields.

Book details:

ISBN: 978 1 78536 248 4

£100.00

360 pp

Hardback

Available from Edward Elgar Publishing here.