Tuesday, November 14, 2017

What is Essential? Measuring the Overdeclaration of Standards Patents

Standard essential patents are a relatively hot area right now, and seem to be of growing importance in the academic literature. I find the whole issue fascinating, in large part because most of the decisions are handled through private ordering, and so most of the studies are based on breakdowns.

One such breakdown occurs when companies declare too many patents essential to a standard. This happens if a company claims that too many of its patents must be practiced for the standard. The incentives for doing this are obvious: once declared essential, it is easier to argue for royalties or cross-licensing. But there are also important incentives against leaving patents out, for doing so may bring penalties in terms of participation in formation of the standard in the first place. Given that the incentives all align to disclosure, it is no wonder that some companies push back against paying. That said, if portfolio theory holds true--and I think it does in most cases--it doesn't matter much if there are 10 or 100 patents, as long as the first few are strong and essential. But that's an argument for another day.

Just how prevalent is this overdeclaration problem? One paper tries to figure that out. Robin Sitzing (Nokia), Pekka Sääskilahti (Compass Lexecon), Jimmy Royer (Analysis Group, Sherbrooke U. Economics), and Marc Van Audenrode (Analysis Group, Laval U. Economics) have posted Over-Declaration of Standard Essential Patents and Determinants of Essentiality to SSRN. Here is the abstract:
Not all Standard Essential Patents (SEPs) are actually essential – a phenomenon called over-declaration. IPR policies of standard-setting organizations require patent holders to declare any patents as SEPs that might be essential, without further SSO review or detailed compulsory declaration information. We analyze actual essentiality of 4G cellular standard SEPs. A declaration against a specific technical specification document of the standard is a strong predictor of essentiality. We also find that citations from and to SEPs declared to the same standard predict essentiality. Our results provide policy guidance and call for recognition of over-declaration in the economics literature.
This is an ambitious study. The authors used data on SEP declared patents (for the ETSI 4G LTE standard, among others) that were independently judged* by technical experts. They then performed regressions to determine whether there were specific factors that had an effect on being "actually" essential. One key finding was that when the patent was declared for a specific standards document, it was much more likely to be deemed essential than if it were declared for the standard generally. My takeaway is that when the specifics are outlined, companies know what their patents cover, but when faced with a broad standard, they will contribute anything they think might be close.

They also found that patents later assigned to NPEs were not more likely to be nonessential. Similarly, while firm size and R&D investment had a statistically significant effect on the likelihood of being actually essential, that effect was so small that it was practically insignificant. Finally, they find that longer claims (which are theoretically narrower) are, in fact, less likely to be essential.

As with other papers, there is a lot of data here that is worth looking at. But the final conclusion is an interesting one, worth carrying over to other papers: the traditional measures that economists use to judge patent value (such as citations) do not predict whether a declared patent will be technically essential. This is growing support for paper findings that question the use of these metrics.

*The authors explain the trustworthiness of their data. I'll leave it to the reader to decide whether it holds up.

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