How does a Patent Ambush work?

Patent ambush is the phrase used to describe a situation of patent misuse where one of the standard setting organization’s members keeps vital information from the rest while setting up a new standard.

The member involved in the patent ambush is either the company owner or one of the members that intend to file a patent or is in the process of doing so when the patent is related to the specific standard being developed. Once the standard has been set, the member or the member’s company files for patent infringement because the standard embodies specific elements of the patent.

To prevent patent ambushes international standard setting institutions may have specific rules regarding information provision by member committees when they work together in setting a new standard. The institutes such as ANSI can require that all participants in the development of a new standard must disclose any patents pending, intention to file or knowledge about patents related to the standard upfront.

The institute will in order to prevent a patent ambush then take the required steps to modify the standard or as an alternative seek a commitment on paper by the patent holder or company to license the users of the standard in a normal and fair manner.

Patent ambushes are frowned upon by the intellectual property communities and many governments see the act of a patent ambush as against healthy competition and the building of trust.

The patent ambush can for instance, also take the form of the filing of a continuation patent application. In the application claims are lodged specifically aimed at the new standard.

A patent ambush can also be done regarding a sub-marine patent which is a patent that has not been made public for years after the application.

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