1. 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

2. 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

3. 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

4. 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

5. 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
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
to clarify core elements of an equitable, effective and enforceable licensing methodology around FRAND principles and
to facilitate the efficient and balanced settlement of disputes.”
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6. 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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7. 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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8. 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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9. Possible measures: Enforcement
Some guidance on the Huawei-process
Portfolio litigation and damages
Enhancing the role of arbitration
Proportionality
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10. 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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11. 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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12. Thank you for your attention!
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