Navigating SEP Disputes: Insights from the JPO SEP Symposium on Global Trends and Innovations
This is a summary of the presentation by Commissioner, Japan Patent👉 A legal right granting exclusive control over an invention for a limited time. Office Kiyoshi Mori Patents and Standards👉 Patents protect inventions; standards ensure compatibility and interoperability.. The content is fully aligned with the joint CEIPI European Patent Office Diplom Universitaire IP Business Administration and can be used to supplement the diploma content.
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On May 19, 2022, Kiyoshi Mori, Commissioner of the Japan Patent Office (JPO), delivered a highly insightful presentation at the JPO SEP Symposium titled “Latest Global Trends and the Frontier of Discussion.” The presentation focused on the intersection of patents and standards, particularly in the context of Standard Essential Patents (SEPs), and highlighted the JPO’s approach to managing disputes and promoting innovation👉 Practical application of new ideas to create value..
Introduction to Patents and Standards
Mori began by outlining the role of patents and standards in promoting innovation. Patents provide exclusive rights to inventors, allowing them to recoup their investment in research and development. Standards, on the other hand, facilitate the widespread adoption of technologies by ensuring interoperability👉 Systems' ability to exchange and use data seamlessly. among different products and services. The combination of patents and standards is crucial for advancing technological progress, as it balances the need for innovation with the need for compatibility and accessibility.
Disputes Between Different Industries
The presentation focused on the challenges posed by disputes between different industries, particularly in the Information and Communication Technology (ICT) sector. Historically, negotiations between telecom companies have been complex due to issues such as licensing👉 Permission to use a right or asset granted by its owner. rates and the essentiality of patents. The JPO has addressed these challenges through several initiatives.
JPO’s Approach
- Guide to Licensing Negotiations Involving Standard Essential Patents: The JPO has developed a comprehensive guide that summarizes issues concerning licensing negotiations objectively. This guide aims to provide clarity and transparency in SEP licensing, helping parties navigate complex negotiations.
- “Hantei” System for Essentiality Check: The JPO offers an advisory opinion system, known as “Hantei,” which provides non-binding assessments on the essentiality of patents. This system helps parties determine whether a patent is truly essential to a standard, thereby facilitating more informed negotiations.
Recent Court Decisions
Mori highlighted several significant court decisions that have shaped the landscape of SEP disputes:
Huawei v ZTE (CJEU, 2015)
- The Huawei v ZTE case, decided by the Court of Justice of the European Union (CJEU) in 2015, established a crucial framework for good faith negotiations in SEP licensing. This framework emphasizes that SEP users must respond diligently and in good faith to license offers, without employing delaying tactics2. The ruling places a significant burden on SEP users, requiring them to provide appropriate security and render accounts if negotiations fail, thereby ensuring that SEP holders are not unfairly disadvantaged.
Sisvel v Haier (Germany, 2020)
- The Sisvel v Haier decision in Germany clarified that providing a claim chart is not mandatory in SEP infringement cases, offering flexibility in how patent holders present their claims. This flexibility is important as it allows patent holders to adapt their strategies based on the specific circumstances of each case. However, the court also noted that implementers cannot condition their willingness to license on prior court validation of patent validity, which could be seen as a delaying tactic.
Unwired Planet v Huawei (UK, 2020)
- The Unwired Planet v Huawei case in the UK determined that a global rate for SEP licensing can be appropriate under certain conditions. This ruling has significant implications for how licensing rates are negotiated across different jurisdictions, as it suggests that a single rate can apply globally. The UK courts have become a key venue for determining global FRAND terms, which can influence SEP licensing strategies worldwide.
Nokia v Daimler (Germany, 2020)
- The Nokia v Daimler case highlighted the complexities of SEP disputes between different industries, such as ICT and automotive. This case underscored the need for clear guidelines and frameworks to manage such disputes effectively. The settlement between Nokia and Daimler in 2021 resolved the litigation but left open questions about how SEPs should be licensed in the automotive sector.
Conversant v Huawei (China, 2020)
- The Conversant v Huawei case in China marked a significant development in the use of anti-suit injunctions (ASIs) in SEP disputes. The Chinese Supreme People’s Court issued an ASI to prevent enforcement of a German court’s injunction against Huawei, reflecting China’s growing role in managing global SEP litigation. This decision highlights the complexities of managing legal proceedings across multiple jurisdictions and the strategic use of ASIs to influence SEP disputes.
Governments’ Approach
Mori discussed how various governments are addressing SEP issues:
- United States: In December 2021, the Department of Justice (DOJ), the U.S. Patent and Trademark Office (USPTO), and the National Institute of Standards and Technology (NIST) jointly released a draft policy statement on SEPs, seeking public comments.
- United Kingdom: The UK Intellectual Property👉 Creations of the mind protected by legal rights. Office (UKIPO) conducted a “Call for views” on SEPs and innovation in December 2021, aiming to gather insights from stakeholders.
- European Union: The European Commission launched a public consultation in February 2022 to develop a new framework for SEPs, seeking input on how to balance innovation with fair competition👉 Rivalry between entities striving for a shared goal or limited resource..
- Japan: In March 2022, the Ministry of Economy, Trade and Industry (METI) established “Good Faith Negotiation Guidelines for Standard Essential Patent Licenses.” These guidelines set norms for good faith negotiations between rights holders and implementers, promoting transparency and fairness in SEP licensing.
Revision of the Guide and Public Consultation
The JPO is revising its “Guide to Licensing Negotiations Involving Standard Essential Patents” to reflect recent court decisions and industry feedback. A public consultation was held from May 9 to June 8, 2022, on the JPO website, inviting comments from industries and experts. This process not only aimed to refine the guide but also to foster broader discussions on SEP-related issues. The results of the consultation will be published alongside the revised guide, ensuring that the document remains relevant and effective in addressing emerging challenges.
Conclusion
Kiyoshi Mori’s presentation at the JPO SEP Symposium provided a comprehensive overview of the current landscape of SEPs, highlighting both the challenges and opportunities in managing these critical patents. By emphasizing the JPO’s initiatives and international developments, Mori underscored the importance of collaborative efforts to promote innovation while ensuring fair competition. The ongoing dialogue and policy developments in this area are crucial for navigating the complex intersection of patents and standards, ultimately benefiting both innovators and consumers alike.
