The topic of standards-essential patents (SEPs) was the subject of one of the workshops at FICPI’s World Congress in Cannes in September 2022.

 

The purpose of Workshop 6, “Improving the SEP framework for the IP profession and its clients”, was to explore the numerous issues related to SEPs, and to determine which topics under the SEP umbrella should be studied and debated within FICPI, in order to eventually create FICPI positions on these topics.

The workshop, led by Brett Slaney and Essenese Obhan, began with an overview of recent activities within FICPI’s Study & Work Committee (known by its French acronym, CET). This included a submission to the European Commission on a recent initiative to study the creation of a more efficient and transparent framework for SEPs, and reaction to a Japan Patent Office initiative on standards licensing guidelines, among other things. 

A recent case involving SEP anti-suits (Interdigital v. Xiaomi) was then discussed as an example of the complexities of this topic.

With active participation from attendees, we were able to identify six topics related to the SEP system that warrant further study within FIPCI, which conveniently follow the typical timeline of standards development and the role of SEPs in such standard development and eventual adoption/implementation of the standard.

 

Six topics for further study

The six topics chosen for further study by FICPI can be summarised as follows:

  1. The parallel development of patent protection for inventions related to a standard and the standard itself, including the difficulties in mapping standards language to claim language in a patent application, especially when the patent application was drafted and filed before the standards language is solidified.
     
  2. The determination of essentiality and related issues of potentially over declaring patents that perhaps are not truly essential to the standard.
     
  3. The lack of updating of essentiality as a standard evolves – i.e. whether there should there be a mechanism to remove patents declared for a standard if the evolution of the standard departs from the patent’s coverage.
     
  4. Hold-up and hold-out tactics and potential abuses of the system. Related to this topic is a study of abuses of dominance and anti-competitive behaviour.
     
  5. FRAND licensing negotiations and issues of transparency/confidentiality of terms, multiple layers of licenses/licensees for certain products.
     
  6. Interim relief mechanisms involving SEPs when there is a dispute (e.g. are preliminary injunctions appropriate or even available).  Also related to this topic is the role of pre-suit mediation and exhaustion of rights.

These topics form the basis for SEP-related work that will continue within FICPI’s Study & Work Group on Software, High-Tech and Computer Related Issues (known as CET 6) during the next FICPI term.

 

FICPI’s view and involvement

FICPI is the only organisation exclusively for independent IP attorneys, bringing practitioners from around the world together to connect, share knowledge and grow, through occasions such as the FICPI World Congress, as well as events such as the Open Forum and regular FICPI webinars. IP attorney members can get involved with FICPI work to promote common solutions and advocacy for private practice through FICPI Commissions and Committees.

 

Next steps

 

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