Standards & Patents: The Increased Interplay Between the Two

Jim Harlan, Senior Attorney, Research In Motion Ltd, USA

The interplay between standards and patents has increased over the last few years. Standards development organizations (SDOs) are continuing to promulgate new common specifications. Patent owners are trying to develop and gain international acceptance for new ideas by implementing them in a standard while simultaneously seeking to protect their innovation in patents. Implementers of the patents are trying to bring the technology to the user while concurrently maintaining an adequate bottom line when the licensed technology is accepted into a new standard. The interplay is causing an increased tension amongst the rights of various stakeholders, thereby resulting in cases being brought before the courts, many of which are asking questions of first impression.

Jim Harlan has been an attorney with Research In Motion since 2009. As Senior Attorney, Jim practices in the Patent & Standards Strategy group, and spends substantial time on IPR policy issues throughout the world. In advocating IPR Policy, Jim interacts with law makers from other countries and helps create standards organizations, in addition to providing input on new legislation, IPR position papers, and amicus briefs. He enjoys building alliances and creating consensus to further RIM’s goals in the global arena of IPR/Standards Policy. Prior to joining RIM, Jim was IP Counsel for Siemens with a particular emphasis on patent asset strategy that included risk management and acquisition. Also he has drafted and prosecuted numerous patent applications. Prior to going in-house, Jim was a patent litigator for 5 years and had the pleasure of working with (now Chief Justice) John Roberts on a case argued before the U.S. Supreme Court. Jim has a Master’s of Business Administration in Finance and Marketing from the University of Texas at Dallas. He earned a Bachelor’s Degree in Chemistry, a Master’s Degree in Computer Science, and a Law Degree from Wayne State University in Detroit, Michigan. Jim started his technical studies in Biochemical Engineering at the University of Texas at Austin. He is active in the legal community as Co-Chair of the Dallas Chapter of the Licensing Executive Society; a member of the Information Technology Industry Counsel, Standards Policy Committee; and sits on various other IPR Standards Policy committees (e.g., AIPLA, IPO, TIA). Jim grew-up in Dallas having attended St. Marks School of Texas. He lives in Plano with his wife and 4 children.

Research In Motion (RIM), is the designer and manufacturer of the award-winning BlackBerry smartphone, used by millions of people around the world. The company also creates software for businesses and the operating system that allows the BlackBerry smartphone to provide mobile access to email, IM, apps, media files, the Internet and more.