USPTO, WIPO partner to jointly address SEP disputes
The agreement follows a rise in the use of wireless tech and global litigation | Apple, Nokia, and Ericsson among those embroiled in disputes | Kathi Vidal | Daren Tang.
The US Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO) have agreed to partner on dispute resolution efforts related to standard-essential patents (SEPs).
The commitment to jointly help resolve disputes was confirmed in an announcement published on the USPTO’s website on July 7, 2022.
USPTO director Kathi Vidal and WIPO director general Daren Tang signed a memorandum of understanding during WIPO’s general assembly in Geneva this week.
The move comes following a rise in the use of wireless technologies, including 3G, 4G and 5G, and with it a greater interest in licensing and use of standards. This has, in turn, prompted tech companies, including Apple, Nokia and Ericsson. to enter into global litigation over the standards governing this technology.
Commenting on the agreement, Vidal said: “International standards, and the role of patents that are essential to them, play an important role in promoting a strong national and global economy.”
SEPs are patents that have been declared essential to a given technical standard. As part of the standards-setting process, patent owners may agree to license SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. These standards include video compression, wireless communication technologies, computer connection standards, automotive technology, and more.
This agreement, Vidal noted, highlighted the USPTO’s leadership role in advancing discussions on SEP policies.
Last year, the US Department of Justice, alongside the USPTO and the National Institute of Standards and Technology asked for public comments on a new draft policy on SEP licensing and negotiations in a bid to promote “good faith licensing negotiations” as well as address remedies for SEP FRAND commitments.
“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 both 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.”
“In the last few years, the WIPO Arbitration and Mediation Center has been facilitating the resolution of SEP-related disputes and the new collaboration with the USPTO is an exciting development which will contribute to improving the efficiency of standard implementation,” noted Director General Tang.
According to the agreement, the USPTO and WIPO will cooperate on measures that lend efficiency and effectiveness to the resolution of disputed standard essential patent matters by leveraging existing WIPO Arbitration and Mediation Center and USPTO resources.
The two organisations will also engage in stakeholder outreach to raise awareness of the services provided by the WIPO Arbitration and Mediation Center through joint USPTO-WIPO programmes.
The agreement will continue in operation for five years from the date of signing.
“We appreciate all the work Director General Tang and WIPO have done in this critical area. We look forward to a successful collaboration and engaging stakeholders to ensure we shape dispute resolution that will facilitate participation and implementation of standards by all innovators including small to medium-sized enterprises,” remarked Vidal.
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