A balanced framework for

the licensing of Standard Essential

Patents

Anne von Zukowski

Intellectual Property and Fight against Counterfeiting
European Commission, DG GROWTH
SBS training
IPR-based standardisation
What are the opportunities and challenges for SMEs?
Brussels, 29 June 2017
The dilemma at the intersection of IP and
standardisation

Create incentives and reward for R&D, innovation and contribution

of top technology to standards

Access to standardised technology at fair terms to ensure wide

dissemination of a standard and its technology

Need for a framework enabling smooth and efficient process for SEP
licensing

New environment with the advent of the Internet of Things

Clear stance taken in other jurisdictions need for European vision on

the topic
2
 Three key ingredients for balanced and
effcient SEP licensing

A transparent environment for negotiations between SEP holders and

potential licensees

Common valuation principles for SEPs technology

A balanced and predictable enforcement regime

3
 Imperfections in all three pillars

Opaque information about SEP exposure

Very high number of declared SEPs
Based on self-declaration without scrutiny
Increasing number of SEP holders for a single standard

Key valuation and licensing principles debated

Calculation base for royalty
Licensing level in the production chain
No transparency on licensing conditions
Lack of predictability
Compatibility of Open Source and FRAND

An evolving enforcement regime

Interpretation and development of the Huawei judgement

4
 Room for improvement?
Commission Communications on Digitising European Industries
and ICT Standardisation Priorities (April 2016):
The Commission will work in collaboration with stakeholders including ESOs, EPO, industry
and research, on the identification, by 2017, of possible measures to
(i) improve accessibility and reliability of information on patent scope, including measures to
increase the transparency and quality of standard essential patent declarations as well as
(ii) to clarify core elements of an equitable, effective and enforceable licensing methodology
around FRAND principles and
(iii) to facilitate the efficient and balanced settlement of disputes.

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 Guiding principles

Holistic approach across all three pillars

Focus on licensing process conditions not on prescribing an
outcome
Preserve flexibility for evolving business and technology
environment
Soft law instrument providing signposts for European vision of
balanced SEPs licensing environment

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Possible measures suggested in Commission
consultations and studies:
Transparency

Increase precision of declaration

Revision at the time of final adoption of the standard
Update following litigation
Essentiality checks?

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 Possible measures: Valuation and licensing
principles

Mapping of valuation methodologies for FRAND

Differentiation according to use case of the implemented
technology?
Clarify licensing rights along production chain
Transfer
Role of Patent pools

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 Possible measures: Enforcement

Some guidance on the Huawei-process

Portfolio litigation and damages
Enhancing the role of arbitration
Proportionality

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 SEPs and Open Source

In the context of current technology evolution, open source

software implementations becomes more and more extended,
included for ICT standardisation
Integration between open source based solutions and
interoperability standards is win-win situation
Commission supports OS solutions. FRAND can also
accommodate royalty-free concepts
Need to clarify the interaction between open source
communities projects and SDOs processes

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 Next steps

Ongoing follow-up discussions with stakeholders in bilateral

and multilateral settings
Internal work of the Commission
Commission Communication scheduled for this year

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 Thank you for your attention!
anne.von-zukowski@ec.europa.eu
https://ec.europa.eu/growth/industry/intellectual-
property/patents/standards_de

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