Overview
“International standards, and the role of patents that are essential to them, play an important role in promoting a strong national and global economy,” said USPTO Director Kathi Vidal. In July, the USPTO agreed to work with the World Intellectual Property Organization (WIPO) on joint efforts to facilitate the resolution of disputes related to standard essential patents (SEPs).
Why is this so important? First, technical standards (e.g., 4G, 5G, or WiFi) are essential for the technological compatibility of modern products. SEPs are patents held by an institution that are essential to practicing a technical standard. As part of the standards-setting process, patent owners agree to license SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. Second, given the potential value of SEPs and the standardized technology they cover around the world, SEPs are often the subject of patent disputes in the US and internationally. SEP disputes commonly arise when the licensing entity and the practicing entity do not see eye-to-eye on what a “fair and reasonable” royalty for a SEP would be.
Under the terms of the five-year agreement, the USPTO and WIPO will cooperate on Alternative Dispute Resolution (ADR) activities that will resolve disputed SEP matters by leveraging existing WIPO Arbitration and Mediation Center and USPTO resources. The agreement also calls for stakeholder outreach to raise awareness of the services provided by the WIPO Arbitration and Mediation Center through joint USPTO-WIPO programs.
“Our work with WIPO underscores the USPTO’s view that SEP policy is an international issue of international importance,” said Vidal. “This agreement will leverage existing resources at the USPTO and WIPO, supporting options to enhance the efficiency of licensing of standard essential patents, and promote resolution of disputes related to those standards.”
