As stated by the Japan Patent Office (JPO)…“In recent years, Standard Essential Patents (SEPs) are more actively debated due to the accumulation of court decisions and the trends in efforts by the government in each country. Thus, the JPO Standard Essential Patents (SEP) Symposium May 19, 2022 – Latest Global Trends and the Frontier of Discussion.
The JPO hosted this symposium of experts on the latest SEP trends in the regions of Japan, the US and Europe. In part, because the JPO is now preparing to revise the “Guide to Licensing Negotiations Involving Standard Essential Patents”, last published in 2018.
Information about the symposium, including all presentations and videos can be found here.
A key conclusion from the symposium was the need for regulatory action now, due to the growing role of SMEs in bringing technology innovation and solutions to the market. For example, in their presentation, the European Commission states:
“IoT multiplies SEP applications, implementers are increasingly SMEs.”, and “All potential actions should be to the benefit of all stakeholders, especially start-ups and SMEs.” SMEs are Kimura & Partners’ primary client type globally, so this hits home for us, SME’s and supportive multinationals globally.
In his introductory presentation, JPO Commissioner Mori laid out the international context that all major jurisdictions are contemplating regulatory actions on SEP. As such:
- The US launched two public consultations (December 2021 and April 2022).
- The UK launched a public consultation (December 2021).
- The JPO adopted guidelines in 2018, 2020 and 2022.
Interestingly, several presentations cite the famous Daimler / Nokia litigation as a recent landmark case. The dispute began in spring 2019 when Daimler and some of its suppliers complained to the European Commission that Nokia was exploiting its market power with its standard essential patents (SEPs). Nokia launched a counter-offensive, suing Daimler for infringement of several patents at the regional courts of Dusseldorf, Mannheim and Munich. At the last count, Daimler had ten lawsuits pending before the courts. This case was settled in 2021.
All of this relates to the growing penetration of 5G globally, in which these are the SEP owners globally:
• EU: Nokia, Ericsson (~17%); US: Qualcom, Intel, Interdigital (~14%); US: Qualcom, Intel, Interdigital (~14%); Korea: LG, Samsung (~27%); Japan: Sharp, NKK Docomo, Panasonic, Sony (~9%).
The presentations focus on the roles of SEP owners, and also on SEP Implementers and Innovators. Summary conclusions from the USPTO Presentation:
- SEP based standards success requires a Balanced Ecosystem.
- Licensors make massive R&D investments, but effectively cede their patent-protected technologies to rivals by agreeing to put their IP into a standard.
- Licensees are at risk of overpaying for (or being unable to use) technologies, disabling them from entering the marketplace.
From the EU Commission Presentation:
What do we want to achieve?
- Promote an efficient and sustainable SEP licensing ecosystem in the interests of both SEP holders and implementers.
- Ensure a continued participation in standardization.
- Ensure a smooth access to standardized technology.
- Ensure a fast and widespread diffusion of the standardized technology.