It has been a busy couple of weeks for standard essential patents (SEPs). Last week, we had the Unwired Planet v Huawei decision on FRAND (see post by the Amerikat here), and now we have the European Commission's roadmap on SEPs. With thanks to Katfriend Colm Ahern (Elzaburu, Madrid) who brings us up to date on the Commission's publication:
"The European Commission has just published its roadmap "Standard Essential Patents for a European digitalised economy", which is an initiative aimed at paving the way for 5G and the Internet of Things. One of the main problems that it sets out to address is the risk of uncertainty in SEP enforcement.
IPKat readers will remember that the Commission scored a significant victory in Huawei v ZTE C‑170/13, which significantly curtailed the rights held by owners of SEP patents under the “Orange Book Standard”. The CJEU decision obliged owners to offer any alleged infringers specifics of a fair, reasonable, and non-discriminatory (FRAND) license which could then become the subject of a counter-offer. The alleged infringer was only prevented from relying on a charge of abuse against the rights owner if its counter-offer were held not to be in accordance with recognised commercial practices and to constitute a mere delaying tactic. The alleged infringer could also reserve the right to later challenge both patent validity and the existence of infringement.
The Commission's roadmap points out that the judgment does not give guidance on the level of technical specifications which would be required to sustain the essentiality claim or the timing and basis for FRAND counter-offers . Nor does it deal with the issues of licenses covering an entire portfolio of patents or the impact of alternative dispute resolution mechanisms. Industry simply cannot wait until these and other issues wind their way through the slow and costly litigation system. The Commission instead proposes to fill the gap by “complementing existing jurisprudence” through best practice guidance, "without changing legal positions or rights and obligations”. So no directive for the moment. Further stakeholder consultations are planned to follow up on the SEP workshops and public consultations held in 2015 and 2016."
IPKat readers will remember that the Commission scored a significant victory in Huawei v ZTE C‑170/13, which significantly curtailed the rights held by owners of SEP patents under the “Orange Book Standard”. The CJEU decision obliged owners to offer any alleged infringers specifics of a fair, reasonable, and non-discriminatory (FRAND) license which could then become the subject of a counter-offer. The alleged infringer was only prevented from relying on a charge of abuse against the rights owner if its counter-offer were held not to be in accordance with recognised commercial practices and to constitute a mere delaying tactic. The alleged infringer could also reserve the right to later challenge both patent validity and the existence of infringement.
The Commission's roadmap points out that the judgment does not give guidance on the level of technical specifications which would be required to sustain the essentiality claim or the timing and basis for FRAND counter-offers . Nor does it deal with the issues of licenses covering an entire portfolio of patents or the impact of alternative dispute resolution mechanisms. Industry simply cannot wait until these and other issues wind their way through the slow and costly litigation system. The Commission instead proposes to fill the gap by “complementing existing jurisprudence” through best practice guidance, "without changing legal positions or rights and obligations”. So no directive for the moment. Further stakeholder consultations are planned to follow up on the SEP workshops and public consultations held in 2015 and 2016."
Commission Roadmap: No Directive on SEPs (for now)
Reviewed by Eibhlin Vardy
on
Wednesday, April 12, 2017
Rating:
Reviewed by Eibhlin Vardy
on
Wednesday, April 12, 2017
Rating:
Follow the IPKat on LinkedIn 
![[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEgWJYQUJNvYydrZcjwSHPuxd14xX3_48aBusHKBogY-Wg1BPSJSABbFFjmGiUV3aqG2npP9xYaIl1vtWK5AsqGOQPgRD2TWFLhyyc4xGm1fHDD-tt9kHcrSSgAyju2P9wSKz0VW6h7D5MD4Hxd9vREyxKYzlMRNXxxtxc3DiNsXppfVaxgSxAMV/s72-c/21742619125_7c9e53cd39_o.png)
![[Guest post] Comparison of wine and gin: the EUIPO’s unquestionable Similarity Tool](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiNfTEBXiPVS0XjZi4mNE1OtXLxXiEp1PUgcUK7MMMXlfyTkO5SMXv-VCMXXNdS_F1XdMMxYca1VbBTGvvDeTVpo5x-5YwR7atQJmK3x32T8LACpf4308kht3nEtaxPwEPcGGrB0s5xjGktmQPOiVwPVLRO5JbW19qupc7xUtiVutvaWHow0OpBkA/s72-c/Picture%201.jpg)
![[Guest post] Muddying the waters of copyright – a rapid reaction to today’s IPEC decision which sees the sinking of the WaterRower’s claims for copyright protection](https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh7chFANC7ppmZl4_nlR6_hZEcg6cOhVEJNVXqki4p82BoVlcLFotuOXzHWYD5lKLiiK_kRoWeXmJjjaV2DpoKsAWq8U3LFioO5W_841a9gcfDIFjvZWcGqfnr0jWJNtyXptIYR_8bxCssaDkJ9KMokuSqy1g65Il7p2hPwo4MfRCEGoUPQJesvbg/s72-w400-c-h189/Screenshot%202024-11-11%20at%2018.20.45.png)
Posts
No comments:
All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.
It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.
Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html