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™ products was introduced. All holders of patents essential to optical formats used in Blu-ray Disc™ products are invited to join the program as licensor. There is no time limit for submission for essential patents; however, Licensors who contribute eligible patents on or before December 31, 2011 will receive a more favorable share of past-use royalties collected on their essential patents, subject to program terms and conditions.

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 claim chart to One-Blue 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 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:

  • Proskauer Rose LLP – Contact person: Ken Rubenstein
  • Sughrue Mion PLCC – Contact person: Alan J. Kasper

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 evaluator is:

  • King & Wood Mallesons – Contact person: Richard Zheng

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.