Efficient infringement and the undervaluation of standard-essential patents

By Michael T Renaud, James M Wodarski and Sandra J Badin

Faced with the growing problem of efficient infringement and the difficulty of obtaining adequate protection from the courts, US owners of standard-essential patents need to develop creative strategies to protect the value of their rights

As many commentators and industry insiders have observed, would-be patent licensees appear increasingly reluctant to come to the negotiating table. While the issue is affecting rights holders across the board, it appears particularly acute in the area of standard-essential patents (SEPs), where there is a broad perception that the worst that can happen to an unwilling licensee which is found to infringe a valid SEP is that it pay the same fair, reasonable and non-discriminatory (FRAND) rate it would have had to pay if it had agreed to take a licence in the first instance. Given the not-insignificant possibility that the would-be licensee might be able to invalidate the SEP if it gets sued, there is an increasingly prevalent belief that it is good strategy to hold out on taking a licence, and force the patent owner to litigate. This strategy has become known as ‘efficient infringement’.

Want to read more?

Register to access two of our subscriber-only articles per month

Subscribe for unlimited access to articles, in-depth analysis and research from the IAM experts

Already registered? Log in

What our customers are saying

You have a great publication! It is the central professional journal in the field of intellectual assets.

Dr Lindsay Moore
CEO and president, KLM Inc Management Consultation
Adjunct Professor of Law, George Washington University Law School


Subscribe to receive access to the full range of premium business intelligence, insights and analysis, as well as our IP directories, guides and daily news.

Why subscribe?


Register for more free content

  • Read more IAM blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 90