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Friday, 31 July 2009

The MoU, the merrier ...

The IPKat was very excited when he read earlier this week about the Memorandum of Understanding concluded between the European Patent Office (EPO) and the Institute of Electrical and Electronic Engineers, Inc Standards Association (IEEE-SA). According to the EPO's website:

"Signed by EPO's ad interim Vice-President for Legal and International Affairs, Wim Van der Eijk, and IEEE-SA Managing Director Judith Gorman, the memorandum aims to increase co-operation between the two institutions on standards and intellectual property.

In the MoU, the two organisations agree to share knowledge, information and documentation on technology and standards, and to collaborate on education related to standards and IP issues. The IEEE will also facilitate the involvement of EPO representatives in all relevant IEEE-SA working groups and investigate whether the Office can participate in beta testing of its document management system.

"Clearly defined interfaces and information exchange must be established between formal standards setting organisations and patent offices in order to increase transparency in this critical field, where two types of regulatory systems are interfering " says Wim Van der Eijk. "This is the first agreement of its kind, but it is part of a wider strategy."

"We are also in talks with the International Telecommunication Union (ITU) and the European Telecommunications Standards Institute (ETSI) and hope to conclude similar agreements with them," he said.

"This landmark collaborative agreement with the EPO will help educate, promote and strengthen positions surrounding intellectual property polices in standardization," says Judith Gorman, IEEE-SA Managing Director. "It opens the door for a wide-range of activities related to IP in efforts to support the IP needs of industry not only in the EC, but around the globe."

Closer involvement with standards organisations is supporting EPO's efforts to make sure that the patent system contributes to the promotion of innovation and a healthy, competitive environment for business.

The IEEE, a not-for-profit corporation based in New Jersey, is a leading developer of international standards that underpin many of today's products and services, particularly in the fields of telecommunications, information technology and power generation".
The IPKat is a cooperative Kat, and he likes to see bodies like the EPO being seen to be caring and sharing. But what he wants to know is this:
* There are a lot of long and quite grand words in this MoU -- but what in practical terms do they mean for the examiner or the Boards of Appeal when they are carrying out their current functions?
* How will the effectiveness of any tangible outcome from the MoU be measured? By whom, and at what intervals of time?
* If standardisation in this context means what the IPKat thinks it does, are there any plans to bring the EU or national competition authorities into the circle? This may be important if standards bring about a need for cross-licensing or pooling of patents, with subsequent and vital significance for issues such as the ability of new entrants to gain access to the standards at an affordable cost and the feasibility of developing and patenting technologies that compete with those subject to the standards.
Merpel says, I just can't look at the letters "MoU" without adding "SE" ...


Frozen Duck said...

I hate being cynical, but doesn't this just seem like an excuse for a few business trips on expenses? With the two organizations being located on either side of the Atlantic, one could understand why the words would have to be grand to justify the cost of a document that seems rather worthless in practical terms. Not quite a mouse, and definitely not catnip!

Anonymous said...

If the MoU means what I think it means, then it does make sense - if patents relevant for standardised products, be they mobile phones or memory chips, are being granted because the examiners do not have access to the submissions to the standards bodies, this is of concern. Allowing the examiners access to a further source of prior art to restrict the scope of standard-relevant patents will be of benefit to the industry.

Japser said...

EPO is already cooperating with ETSI to improve the ETSI IPR database. And that database really required improvement, I can tell from experience, so I welcome this cooperation. But I would say that is all ETSI/IEEE/ITU can learn from the EPO.

And what can EPO learn from standardisation organisations? Not much, I would say. Standardisation bodies define standards, rules on disclosure of potentially essential IPR and often also minimal licensing requirements (RAND, unless otherwise indicated). Nothing the EPO is involved in. The only useful thing that springs to my mind is that standard specifications only accessible by signing an NDA are nonetheless deemed to be included in the state of the art, according to a T decision. And I can imagine it would be useful for the EPO to have access to those specifications as well.

For the rest, it's probably the same story as Frozen Duck says.

Rob Harrison said...

I actually think that there could be great benefits to bothe sides.

My impression (as a former Examiner and currently a Patent Attorney) is that the EPO has a lot to learn about patents in general. They are clearly good at searching and arguably good at examining patent applications. However, many of their Examiners really do not understand the effect of their decisions and the role that patents play in the post-industrial economy. The days in which integrated companies applied for patents to exclude their competitors are long gone. Today patents have a much greater role in defining the contributions of various players in the innovation chain. Standards are also playing an increasing role in the economy as companies need to work together and also produce products that work together. I think too few Patent Examiners understand the effect that their decisions have in this marketplace and many of those involved in standards development fail to appreciate the effects of patents on the development of standards. Any exchange of information can only be enhance the quality of both standards development and the grant of relevant patents.

Jasper's comments on the ETSI database are highly pertinent. The dowloadable list from the ETSI website is full of errors - and there is currently no mechanism for really evaluating whether patents are "essential" or not for the standard. Only the UK seems to have accepted the challenge of actually reviewing "essentiality" (see

The W3C has had to resort to calling for relevant prior art to see if it can overcome an Apple patent (see

The EPO could certainly help by providing information and possible services in resolving such disputes.

On the other hand too many participants in the standardisation process fail to protect their own IP. The larger companies all have their own policies - but it often involves quickly putting a provisional application on file before the idea is produced in the standardisation committee. Many smaller SMEs fail to do this - relying instead on goodwill and thinking that since this is a standardisation committe it is not the "done thing" to file patent applications. Participation by EPO Examiners in the development process could change their mind.

Japser said...

Frankly, I have a different opinion on any potential need for understand the effect of their decision on the marketplace. The task of the examiner is to grant patents for applications that meet the requirements of the EPC. Actually, that is THE task of the EPO! [Art. 4(3), EPC].

If we expect examiners to take the effect of granted patents on society into account, we ask implicitly examiners to practice politics. Which in my opinion is a very bad idea... Generally, the EPO is pretty good in granting patents (re. quality, that is), but as there are usually as many political opinions as there are people - and no EPO guidelines.

And indeed, there is no mechanism within ETSI to evaluate "essentiality". Actually, ETSI does not want to have anything to do with this and this is a delicate issue with ETSI. What you should take into account as wel and which is actually the most important, is that essentiality is a question of infringement. Infringement is a matter of national law, to be judged by one or more judges.

Yes, if you take a licence, you take a worldwide licence (in any case for technology relevant to ETSI). But if you want to litigate, you will not take a licence in countries where you do not infringe.

EPO should do what it currently does quite well, ETSI should maintain the IPR policy (or actually, its members should do that) and improve the database and licensors and licensees should address issues of essentiality, infringement and essentiality themselves, with or without help of the courts.

And yes, smaller companies could improve their IPR policies for standardisation. Best company I know in this respect is Qualcomm. Very annoying when you are a licensee, but I highly respect them for the way they play the game. Other companies can certainly learn from that. And that should be taken up by patent firms (and not by EPO or ETSI). I see an important role here for the EPI and the national patent bar associations.

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