DISCLOSURES AND ENFORCEABILITY OF STANDARD-ESSENTIAL PATENTS (Part 6 of 7)
DISCLOSURES AND ENFORCEABILITY OF SEPS IN PERSPECTIVE
The review of developments in antitrust enforcement, SEP litigation, and public policy on the issue of disclosures to SDOs reveal substantial difficulties in the formulation of effective and realistic policies and solutions. A common thread connecting these developments is that insufficient information on the part of public regulators and courts results in measures and policies being adopted and subsequently backfiring by producing unintended consequences.
The “patent ambush” litigation and enforcement against Rambus in the early 2000s provides a good case in point. Undoubtedly, antitrust authorities in both the EU and the United States were motivated by the laudable aim of deterring what they viewed as an opportunistic non-disclosure of SEPs by a technology contributor. But their enforcement (a) revealed that patent ambush may be a problematic ground for enforcement from an antitrust law perspective. More specifically, the U.S. FTC’s action against Rambus was rebuked on appeal by the D.C. Circuit for failing to establish to the requisite standard that insufficient disclosures can have an exclusionary anticompetitive effect.
Similarly, in the United States, the Core Wireless case of the Federal Circuit resting on the doctrine of implied waiver arguably has had an impact on declaration patterns by motivating broader and earlier disclosures, both impacting on the accuracy and precision of those disclosures. The most disconcerting aspect of the Core Wireless ruling is that it relies on a poor and under-developed factual record not in line with the language of the ETSI IPR Policy, the Policy’s objectives or industry practice. The ruling also rests on the incorrect assumption that declarations may have a bearing on decision-making by participants to ETSI technical groups and committees. However, this assumption runs counter to ETSI IPR rules (which call for members to choose based solely on a solution’s technical merit), as well as to overwhelming evidence that technical group members ignore, as a general rule, and are positively unwilling to discuss issues around patenting and licensing, with the only exception those (rare) cases whereby a FRAND commitment is not given.
In particular, the court’s finding that late disclosures can result in SDO members being misled in their choice of technologies has no basis in actual practice. There is empirical evidence that the prevailing pattern in disclosures to ETSI is for those disclosures to be submitted well past the point the court identified as “timely” (the adoption of the standard).58 Indeed, the defendant’s own disclosures were overwhelmingly “untimely” under its proposed interpretation. Despite this practice on the part of ETSI members of submitting disclosures even years after a standard is adopted, ETSI has long developed world-class, cutting-edge standards and some of the most ubiquitous technologies in the telecommunications sector (and beyond).
Accordingly, perceived “late” disclosures have been the norm in ETSI and ETSI developed highly successful standards, due to the fact that those technologies were available on FRAND terms.. In particular, the ETSI IPR Policy makes it clear that members are not required to perform IPR searches to satisfy their disclosure obligations.59 This aspect of the ETSI IPR policy points to the fact that ETSI and its members did not intend to impose a strict requirement on “timely” disclosures, such as the one set by Core Wireless. Moreover, prevailing practice points to the fact that disclosure prior to the adoption of a standard is, in fact, neither necessary nor particularly useful for the standard development organization to do its work, provided that technology contributors ultimately commit to be bound by a FRAND commitment.60
SDO members normally do not need such timeliness in a fast-developing market, because their prime concern is to access essential IPRs on FRAND terms, and this goal is served by the FRAND commitment. Should the SDO member fail to disclose on a timely manner and require afterwards a royalty above FRAND it would face charges of exploitative practices (Art 102 TFEU) in the EU, as Rambus case has shown, and no injunction would be granted to that company (following CJEU ruling Huawei v ZTE). 
For SEP users, these disclosures serve the main aim to trigger contributors’ declarations regarding FRAND assurances. As long as such assurances are provided, a marginal increase in the timeliness of disclosures will practically offer users little added gain. After all, it is widespread practice in many SDOs (not ETSI) for members not to offer disclosure of specific IPRs at all, offering instead a blanket declaration that they possess potentially essential IPRs.61 Blanket or general disclosures in these SDOs point to the fact that the primary concern for users, and for the standardization ecosystem overall, is that of FRAND commitments and SEP accessibility on FRAND terms and conditions.