WIPO Looks At Importance Of Standards Documents, Collaboration Of IP Offices And Standards Organisations

Common standards are essential for technologies, particularly for interoperability. However, a number of technologies essential to standards are patented, which has created issues relating to licensing or high royalties. Last week, the World Intellectual Property Organization organised an information session on patents and standards, including aspects of patent quality, issues relating to international trade, and the role of the organisation in facilitating the relationship between patents and standards.

The information session on patents and standards, which took place on 13 July, sought to look at how the IP community could be part of the solution to the current debates on patents and technical standards. In particular, it looked at a study [pdf] commissioned by WIPO on Technical and Practical Aspects Related to Patent Quality in the Context of Standard Essential Patents was presented.

The Importance of Standards Documents

Chryssoula Pentheroudakis, founder and managing director of IP Vanguard, who authored the study, said one focus of the study was to highlight the significance of the use of standards documents for the purpose of prior art. She said she looked at best practices of the European Patent Office (EPO) and the Japan Patent Office (JPO), both of which have been using standards-related documents during patent examination for some time, as explained in the executive summary [pdf] of her study.

“Granting patents of poor quality exacerbates the already complex interaction between the standardization system and the patent system,” the summary states. No systematic research has been conducted on the link between patent quality and technical standards, she said.

According to Pentheroudakis, patent offices should collaborate with standard development organisations (SDOs). She cited as an example the memorandum of understanding between the EPO and the European Telecommunications Standards Institute (ETSI), the Institute of Electrical and Electronics Engineers (IEEE), and the International Telecommunication Union (ITU).

Similarly, she said, the JPO has entered into collaboration with the IEEE, the ITU and the 3rd Generation Partnership Project (3GPP).

However, most patent offices have not entered into such collaborations, she said, for undetermined factors, which might be based on lack of awareness, misconceptions, infrastructure constraints, financial constraints, or strategic and political concerns.

Another constraint for patent examiners is the “non-patent literature” related to standards, such as standard drafts, she said. Such non-patent literature is “largely inaccessible and non-searchable in an efficient and conclusive manner,” Pentheroudakis said in her presentation [pdf].

In terms of recommendations and policy outlook, Pentheroudakis suggested an intensified use of standards documents in prior art searches, and systematic accessibility and searchability of standard drafts and related data by patent examiners in a reliable and timely manner. She added that there is a need for clear dissemination policy and standard document formats.

In her study summary, she advised that IP offices interested in accessing standard-related documentation for examination could either conduct direct negotiations with local and/or globally relevant SDOs on a one-to-one basis, or in case of resource-limited environments, IP offices could form alliances to enter into collective agreements with SDOs.

According to Pentheroudakis, WIPO could serve as a global contact point between patent authorities and SDOs. In the summary, she says that “WIPO could educate on the benefits of a collaboration between SDOs and patent offices, and encourage the latter to include standards document in the Patent Cooperation Treaty (PCT) minimum documentation for specified technical fields.”

WIPO could encourage patent offices to cooperate in the field of prior art documentation, within the context of standards, by raising awareness, she added.

No Discussion Yet in WTO TRIPS Council

According to Xiaoping Wu, counsellor, Intellectual Property, Government Procurement and Competition Division of the World Trade Organization, the issue of the relationship between standards and patents has been intensively debated nationally, regionally, and internationally over the past decades, in particular in the context of information and communication technology.

The discussion has now shifted to two main issues, she said, the first being the valuation of standard essential patents, which are patents used for essential standards, and the calculation of fair, reasonable, and non-discriminatory (FRAND) royalty rates.

Those two issues are directly impacting international trade in three different aspects, she said in her presentation [pdf]. Those are: the fair and free flow of trade of ICT products, innovation and dissemination of patent technology, and harmonisation and implementation of international standards.

The issue of patents and standards at the WTO are discussed at the Committee on the Agreement on Technical Barriers to Trade (TBT), and the Trade Policy Review Body, in particular during the review of the United States, the European Union, and China. However, the issue has not yet been discussed at the Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS), she said.

Nevertheless, a number of TRIPS articles are relevant to the discussion, Wu said, for example on the issue of valuation of SEPs and the calculation of FRAND (fair, reasonable and non-discriminatory) royalty rates. Although not providing direct guidance on FRAND royalty, Article 31 (Other Use Without Authorization of the Right Holder) (b), 31(h), 31(k), and 45 (Damages) are relevant, she said. Article 31(b) is also relevant, on compulsory licences and government use, she said.

For the control of anticompetitive practices, Article 40 (control of anti-competitive practices in contractual licences) is relevant, according to Wu.

Christian Loyau, ETSI’s legal and governance affairs director, gave a presentation [pdf] of ETSI, indicating that ETSI membership covers over 850 companies from 68 countries, most not European. Members include all kinds of stakeholders, including manufacturers, network operators, service and content providers, national administrations, ministries, universities, research bodies, and user organisations, he added.

Ignacio de Castro, deputy director of the WIPO Arbitration and Mediation Center, presented [pdf] the activities of the center. He said the center, which facilitates the resolution of commercial disputes between private parties involving IP and technology, has seen an increase in cases over recent years.

According to de Castro’s presentation, 28 percent of all cases regard patents.

 

Image Credits: Catherine Saez