FRAND's Forever: Standards, Patent Transfers, and Licensing Commitments

The Internet, computing, and telecommunications industries are ripe for a collision between the worlds of intellectual property and standardization. Many technologies in these industries are covered by patents, and some of these patented technologies are essential to standards necessary for interoperability. Many standard-setting organizations (SSOs) adopt IP rules that require participants in the standard-setting process to disclose essential patents or promise to license essential patents on fair, reasonable, and nondiscriminatory (FRAND) terms to implementers of the standard. However, many SSOs also state that the SSO will not get involved in licensing disputes. Thus, it is left to the patent owner and the implementer of the standard to work through their differences, which sometimes results in generalist judges resolving cutting edge technology issues with potentially far-reaching impacts on consumers.We examine the theoretical foundations of FRAND commitments and analyze recent case law to expose the limited ways that theories grounded in patent, antitrust, and contract can apply to problems concerning the FRAND commitment. We note that a contract-based theory offers a good approach in many situations, but there are significant limitations to contract theory as applied to FRAND commitments. In particular, contract theory fails to effectively address the problem of enforcing FRAND commitments after an essential patent has been transferred.In this Article, we propose a novel theory for applying property law to FRAND commitments. As recent work by Merrill and Smith on the property and contract interface demonstrates, there are a number of areas of law that cannot be characterized as purely “in rem” or “in personam,” and in our view, this includes patents in the context of standards. Our property approach thus emphasizes the FRAND commitment as creating something analogous to a servitude under real property law, but our approach also acknowledges the importance of contract law principles to address many other issues.To preserve the viability of FRAND commitments, we have two main recommendations: (1) courts should view FRAND commitments as having traits of both property and contract and apply our proposed theory that FRAND commitments create a servitude that runs with the patent; and (2) courts and adjudicative agencies should reject efforts to impose injunctions on the use of essential patents when the infringer must use the patent to comply with the standard. Injunctions against the use of SEPs could have more harmful effects on consumers and competition than injunctions against the use of non-SEPs, and by making a FRAND commitment, the patent owner is stating that damages would be adequate to compensate for a loss of exclusivity. We thus urge courts to view a FRAND commitment as converting a property rule into a liability rule. If these two recommendations are adopted, companies that manufacture products that conform to technical standards will stand on firmer legal ground, confident in the availability of a license to all patents that are essential to a standard. This increased legal certainty through carefully circumscribed property and contractual rights will, in turn, foster further investments and support the adoption of standardized technologies, assuring the continuance of a robust market for innovation.