Patenting Standards - A Case for US Antitrust Law or a Call for Recognizing Immanent Public Policy Limitations to the Exploitation Rights Conferred by the Patent Act?

This paper examines the adverse effect of patent ambushing on competitive conditions resulting in the distortion of the standardization process in markets where the effectiveness of competition relies heavily on standardization. The US Rambus litigation serves as a point of departure. In this case, the strategic behavior of the patentee was subjected to both an antitrust and unfair competition analysis. Both approaches display an inadequacy to squarely balance all of the conflicting interests involved. The solution proposed is to apply the patent misuse doctrine as a rule that expresses a public policy defense against patent enforcement so as to ensure the precompetitive function of standard-setting bodies. The argument is then taken further by addressing the issue of whether public policy limitations of patent rights are necessary in network industries in order to achieve welfare-enhancing reductions of the exclusionary effect of the patent. The short introduction is followed by eight parts. Part II sketches the relevant antitrust principles. Part III analyzes critically the possible antitrust argumentation that supports the rulings of both the FTC and the D.C. Circuit. Consideration is given to other judicial opinions as well. The opinion of the D.C. Circuit is considered as rightfully negating antitrust applicability to patent ambushing in view of its potentially over-deterrent sanction system and the general postulate of respecting the competency of the patent system to regulate innovation. The legal problem is thus relegated to another set of norms, the applicability of which will be examined in the following parts. Part IV turns an eye on those opinions that have attempted to apply the unfair competition cause of action to the legal problem at speech. The core legal issue addressed there is the relationship between antitrust and unfair competition theories of liability and more specifically the breadth of FTC authority to forbid unilateral actions in competition that fall short of an antitrust violation. It is affirmed that the Section 5 theories developed by the FTC do not contradict the antitrust doctrine. Part V argues that antitrust and unfair competition theories can neither effectively deter patent ambushing nor enhance static and dynamic efficiency by widening the access to the standard. This can also be said for contractual remedies and some equitable enforcement-related patent law doctrines such as denial of automatic injunctions or estoppel. The remedy that could deter ambushing in network industries and steer inventive effort to socially desirable innovation within the standard is patent unenforceability. Patent ambush is thus a matter of patent scope and coordination of inventive activity according to the public interest. It is, in other words, a patent law problem. The relevant legal doctrine is that of patent misuse. Part VI examines the legal nature of the misuse defense. It purports to dissolve the misunderstanding that misuse has been a doctrinal tool of equity, implementing the inherency doctrine in order to confine the patentee to rewards that are directly related to his right of exclusion. The misuse doctrine is presented as a substantive limitation of patent exploitation for public policy reasons. In this respect it implements the incentives paradigm of patent law at the enforcement stage. Simultaneously it is shown that the misuse theory exists at common law supplementing the Patent Act, has an autonomous field of application and has not been absorbed by the antitrust laws. Part VII deals with the specific application of the misuse theory in industries characterized by network effects. Part VIII examines the extent to which the proposed solution is arguable in Europe. Part IX provides a brief summary and conclusion