What is the process for the evaluation of essential patents? Where can patents be evaluated for essentiality?
Patent Evaluation
Patent evaluation process
Together with the establishment of One-Blue, an open process for evaluating essential patents for Blu-ray Disc™ (BD) products and Ultra HD Blu-ray™ (UHD) products was introduced. All holders of patents essential to optical formats used in BD and UHD products are invited to join the program as licensor. There is no time limit for submission for essential patents.
In some countries or territories, patent evaluations need to be done on a mandatory basis. For hardware and software related patents, these mandatory territories are the US, the EU, China and Japan. For discs, in addition to these territories, also Taiwan is mandatory. For other countries, submission of a certification to One-Blue that the patent includes at least one claim that is substantially the same as a confirmed essential patent claim is sufficient in case you have an essentiality statement of a corresponding patent in one of the mandatory countries.
Entities who believe they have patents that are essential to the implementation of the Ultra HD Blu-ray™ Standards, Blu-ray Disc™ Standards, BD+(*), DVD Standards, and/or CD Standards can submit these to selected patent evaluation law firms.
(*) System Description Blu-ray Disc Read-Only Format Security Virtual Machine (BD+).
Selected patent evaluation firms
One-Blue has selected the following patent evaluation law firms that can evaluate patents for essentiality after which the law firm will offer the result to One-Blue:
In the European Union, the selected patent evaluators are:
- Marks & Clerk LLP (UK) – Contact person: Duncan White
- Cabinet Plasseraud (F) – Contact person: Jean Luc Hartmann
- Cohausz & Florack (Ger) – Contact person: Gottfried Schuell
In the United States, the selected patent evaluator is:
- Potomac Law Group – Contact person: Anthony C. Coles
In Japan, the selected patent evaluators are:
- City-Yuwa Partners – Contact person: Hideo Ozaki
- Tanabe Patent Office – Contact person: Mr Tanabe
In China, the selected patent evaluators are:
- King & Wood Mallesons – Contact person: Maohua Wang
- NTD Patent & Trademark Agency Ltd. – Contact person: Harold Tsiang
In Taiwan, the selected patent evaluator is:
- TIPLO – Contact person: J. K. Lin
If not (yet) confirmed essential in any of the Mandatory Countries, the patent in non-Mandatory Country needs to be evaluated by an independent expert in that country in case the patent holder wants to include that patent in the pool.