1. Comments by Michael J. Meurer BU Law
Global Rate Setting: A Solution for Standard-Essential Patents? Contreras
Comments by
Michael J. Meurer
BU Law

2. What’s Not to Love about Arbitration?
Soviet Union submitted contract disputes with western firms to arbitration
Western observer claimed the Soviet’s had: “one of the best arbitral systems of its kind in the world”
Possibly cheaper, quicker and more accurate Drahozal and Hylton (2003)
If arbitration increases total surplus why don’t contracting parties always use it?

3. Revealed Preference
Only 11% of B2B contracts in a sample drawn from Edgar required arbitration
But this study indicated that 33% of licensing contracts included arbitration, and 20% of international contracts included arbitration Eisenberg & Miller (2007)

4. Why Isn’t Arbitration More Common?
Public subsidy of court and more potent remedies
Arbitrators might be better finding facts, but judges might be better applying law
Arbitration is not always faster or cheaper

5. Contreras says FRAND is an especially good candidate for arbitration
Transparency – discrimination
Consistency – different methods of calculating FRAND royalty rates
Comprehensiveness – multilateral dispute

6. Contreras says FRAND is an especially good candidate for arbitration
Transparency – discrimination
Consistency – different methods of calculating FRAND royalty rates
Comprehensiveness – multilateral dispute

7. Consistency Global royalty rates and race to favorable court
Delaware and corporate law
Delaware better than arbitration b/c judges higher quality than arbitrators
Experiment with legal developments across jurisdictions
Arbitrator tunnel vision like Federal Circuit

8. Details
Can arbitrator and parties gain access to confidential licenses? Pages 28-29
Non-participant manufacturers
Page 25 how can an SDO clickwrap require non-participant manufacturers to arbitrate?
Non participant SEP holders
ITC exclusion?

9. Comments by Michael J. Meurer BU Law
Strategic Delays in Prosecution of Standard Essential Patents at the USPTO Righi and Simcoe
Comments by
Michael J. Meurer
BU Law

10. Results Keep patent family alive until after standard publication
Standard publication triggers very large increase in the filing of continuations
Most of these continuations are later declared essential for the same standards
Downstream players
Delays correlated with higher litigation rates, lower cumulative innovation and lower patent originality

11. Value of Delay Amend or add claims
Expand claim scope to cover standard, or,
Improve on older claim to explicitly cover standard
Gentry Gallery, amend claim language within original application
Lock-in and hold-up

12. SEPs and Matched Patents
Match granted SEPs and control patents on art unit, examiner, filling year and a post-TRIP indicator.
Value?
Match on (1) number of global patent applications or (2) identity of patent prosecutor
Let us know ex ante measure of how valuable controls are compared to SEP

13. SEPs and Matched Patents
Matched SEP application with control application having same number of continuations in advance of first publication date
Number of independent claims

14. Policy Response?
Beef up enablement
Limit continuation practice

15. Patent Optimist Patent disclosure is fixed in original application
No hold-up or ambush
Wishful thinking but might be true if enablement standard were more rigorous

16. Why continuation?
Broader claims after first grant in family with narrow claims
Read on competitors’ product or on standard
Trolling
Cutting edge technology – don’t understand; don’t see applications at first
Insurance against changes in patent law
Avoid newly discovered prior art

17. Downstream
Inflate their portfolio of SEPs to increase their bargaining power in cross-licensing negotiations
Better at minor invention?
Process X
Process Y
Process X & Y
Process X embedded in technology A
Process Y embedded in technology B
Etc.