ITU Workshop on Standards and Intellectual Property Rights (IPR) Issues

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ITU Workshop on Standards and Intellectual
Property Rights (IPR) Issues
Standards and Intellectual Property Rights The
European Patent Office perspective

• Dr Michel Goudelis,
• Director Telecommunications
• European Patent Office

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Standards and technology

• The vast majority of products currently on the
  market were developed in compliance with, or in
  conformity with, one or more standards.
• Many standards aim at protecting human safety,
  health or the environment.
• Standards play an important role in promoting
  compatibility and interoperability of products or
  parts from different producers.
• Standardization also facilitates the exchange and
  mutual use of information among the parties
  involved, thereby enabling different products to
  work together.

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Standards linked to patents

• More technology innovation in all aspects of
  everyday life
• Shorter life cycles, accelerated pace of
  technological development
• More competition and higher value of intangible
  assets
• More sophisticated digital technology in
  Telecommunications, Audio Video and Electronics

New Delhi, India, 19-20 December 2011
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Interface of standards with the patent system

• Patents and standards serve certain common
  objectives insofar as they both encourage or
  support innovation as well as the diffusion of
  technology
• So long as the patent system motivates companies
  to contribute their technologies to
  standardization the best solution is adopted as a
  standard for a wide use in the market at
  reasonable cost
• The patent system and the standardization process
  share the objective of promoting innovation and
  diffusion of technology.
• However, if patent rights are enforced in a way
  that may hamper the widest use of standards, some
  antagonism between the two systems may arise.

New Delhi, India, 19-20 December 2011
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Conflicting trajectories ?

• Patents are private monopolies. They can be
  used to exclude any other from use of the owned
  technology.
• Embedded in standards, they offer their owners
  benefits of a 'double monopoly'.
• Their territorial nature can be used to co-shape
  standards in one region and block them in other
  regions.

• Standards, although mostly set by industry, are
  perceived by broad public to be a kind of public
  good.
• In a technically interlinked world, their nature
  is potentially global.
• Thus, accessibility and ownership issues gain a
  lot of momentum and are debated in many different
  fora.

Exclusively owned technologies embodied in
potentially global standards such as mobile
telephony can produce tensions, if rules of
inclusion and use are not clear, both to other
technology developers and users (telecom
operators).
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Possible conflicts

• One possible scenario is that a patent owner
  participating in the standard-setting process may
  conceal existing patents or pending applications
  which are essential to implementation of the
  standard under discussion (essential patents)
  with a view to enforcing the patent rights only
  after the adoption of the standard and refuse to
  license the patent on reasonable terms and
  conditions.

New Delhi, India, 19-20 December 2011
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Possible conflicts - Continuation

• Another scenario is that an essential patent may
  be owned by a patentee who did not participate in
  the standard-setting process and who may enforce
  the patent rights in a manner that discourages or
  blocks implementation of the standard.
• The latter hold-up problem may also arise
  where a standard is affected by a number of
  patents owned by different patentees. Even if
  each patent owner is willing to license his
  patent on reasonable terms and conditions, the
  total royalty claim may inhibit implementation of
  the standard.

New Delhi, India, 19-20 December 2011
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The case of ICT standards

• In particular, ICT Standards are priority for EPO
  because of the very large number of patents,
  usually included therein, and thus because of the
  possible conflicts arising. In the field of ICT
  Standards, strengths and weaknesses of the patent
  system are magnified, as there is a lot of public
  and political pressure for 'open platforms'
• For these reasons, at the EPO
• - A cross-department Working Group has been
  created.
• - Since 2006 closer cooperation with the
  ICT-standards world is promoted

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Patent Offices cooperation with SDOs

• Area of interest Audio/Video/Media, Computer,
  Telecoms
• access to all the technical contributions
  (temporary, drafts,...)
• Technical field (publishing working group) on
  each document
• effective publication date of submitted
  contributions
• clear dissemination policy

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Cooperation with SDOs contd

• Cooperation means Win Win
• EPO lowers the risk of unduly granted patents
• SDOs reduce the risk of IPR interference

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EPO cooperation with regional Patent Offices

• Exchange of Standards documentation
• Common and harmonised approach toward SDOs
• Intermediation for contacts with regional SDOs
• Exchange of work's experiences among Patent
  Examiners

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Conclusion

• Proper functioning of both systems necessitates
  the resolution of potential conflicts.
• Patent authorities should become pro-active and
  include standards-related documentation in their
  search databases.
• Standardisation organisations could link their IP
  declarations databases to the public registers of
  the major patent offices, such that the included
  information (validity of application, scope of
  granted patents, patent family, etc.) is
  constantly updated and valid.
• Patent rules of standardisation organisations, in
  particular dissemination and confidentiality
  rules, should be clear and enforced.