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
New Delhi, India, 19-20 December 2011
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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.
New Delhi, India, 19-20 December 2011
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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 ?
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.
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.
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 cont’d
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,
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should be clear and enforced.
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