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Understanding the Potential Pitfalls Arising From Participation in Standards Bodies

By Benjamin Hershkowitz
September 01, 2003

Chances are that if your company is involved in research and development of new technology there is a standards setting organization exploring the potential standardization of such technology. While there are clear benefits to participation in standards organizations ' keeping abreast of industry developments, targeting product development toward standard compliant products, steering research and intellectual property protection into potential areas of future standardization ' such participation does not come without certain risks. Whether you are in-house counsel or outside counsel, you may be called upon to advise participants in standard-setting bodies about intellectual property issues or to participate yourself. You may also be asked to review patent policy of the standard-setting body that sets forth the disclosure and notification requirements with respect to patents for that organization. Here are some potential patent pitfalls that can catch the unwary off-guard.

How to Invalidate Your Own Patent Without Really Trying

While patent counsel often repeat as a mantra ' 'do not disclose the invention prior to filing a patent application' ' employees do not always follow this advice. Participation in standards organizations, especially technical participation in a working group, may tempt participants to divulge the company's recent innovations. This disclosure, which may be documented in the working group meeting notes, starts the one-year countdown to placing a patent application on file in the United States. See 35 U.S.C. '102(b). Other countries, including many in Europe, are not so lenient, and disclosure of the innovation prior to filing the patent application can completely bar an inventor from obtaining foreign patent rights.

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