Accelerated processing of Standard Essential Patent (SEP) applications?

In Insights, Uncategorized

22 April, 2015

Numerous industries have benefited from standard-setting organizations (SSOs), whose primary activities encompass developing, coordinating and producing technical standards intended to address the needs of affected adopters. The SSOs may advance technology, as standardization promotes interoperability, quality and user-friendliness.

Technical solutions developed within the scope of a standard may provide significant added value to its users, and standard-essential patents (SEP) may hereby be rewarded to companies which invest in their R&D to provide these solutions. However, a balance needs to be established between a fair return on investment and the possibility of a user to access the standard. This balance forms the fundament of the FRAND (fair, reasonable and non-discriminatory) licensing terms, whereby SEPs may become widely available.

The observation by the President of the Institute of Professional Representatives before the European Patent Office (epi), Mr. Tony Tangena, sent to the European Commission on 6th February 2015, emphasizes the advantages of FRAND terms related to SEPs. In his observation, Mr. Tangena states that SEPs take on a special role in the patent system, as an exclusion of prospective users from a standard could undermine the standardization impact. Hence, the FRAND principles should be defended to mitigate unreasonable, unfair or discriminatory royalties while still adequately rewarding the companies providing the technical solutions protected by their SEPs. In short, a win-win situation for licensor and licensee should, if not always attained, at least be the principles’ goal.

Given the importance of SEPs, it is unsatisfactory that their processing may suffer from patent offices’ backlogs and/or relatively long lead times until grant. To further expedite the processing of patent applications declared to an SSO as standard essential, the President addresses the idea of providing an acceleration program for these patent applications, similar to other programs such as the Patent Prosecution Highway (PPH), the Accelerated Prosecution of European Patent Applications (PACE), etc.

In my opinion, the possibility of letting standard-related patent applications enjoy a shorter and more efficient processing within an acceleration program is highly interesting. This is even further substantiated when considering the processing of patent applications in an area such as telecommunications. In this area, companies often participate extensively in standardization, and shorter patent application processing times are paramount as the average life-time of granted patents within telecommunications is significantly shorter than in other fields such as mechanics or pharmaceuticals. Hence, as standardization strives to serve consumer welfare, and whereby praiseworthy licensing agreements such as FRAND, in their turn, improve the availability of the SEP technologies, I sincerely welcome an acceleration of the processing of standard-related patent applications to increase the patent protection transparency.

Love Koci, European Patent Attorney

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