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7 June 2024NewsPatentsMarisa Woutersen

USPTO and UKIPO join forces over SEPs

US and UK offices sign agreement to cooperate on standard-essential patents | Aims to create a “fair and balanced international ecosystem” | Collaboration comes after the European Parliament's approval of SEP regulations, despite opposition from patent stakeholders.

The UK Intellectual Property Office (UKIPO) and the US Patent and Trademark Office (USPTO) have agreed to work together to enhance standard-essential patents (SEPs).

The two have entered into a memorandum of understanding, signed June 3, 2024, aimed at improving cooperation on matters concerning SEPs and addressing challenges in the SEP landscape

The agreement provides a framework for collaboration between the two offices on policies relating to the IP assets, which are dominant in key technology sectors such as wireless communications.

The collaboration between the USPTO and UKIPO follows the European Parliament's approval of new SEP regulations proposed by the European Commission, despite heavy lobbying from patent owners.

Criticism of the plans emerged from many stakeholders, including SEP holders, implementers, and even standard-setters. The European Telecommunications Standards Institute(ETSI) raised its concerns about the commission’s plans to regulate SEPs even before the official draft was published.

Additionally, the European Center for International Political Economy (ECIPE) argued that the draft proposals would negatively impact technological development in Europe.

Working together for a ‘fair and balanced’ system

Speaking on the collaboration with the UK, USPTO director Kathi Vidal said: “Standards touch all aspects of modern life, including video compression, wireless communication technologies, computer connection standards, automotive technology, and more.”

The collaboration with the UKIPO, according to Vidal, will help the two “work together toward a fair and balanced international standard-essential patent ecosystem that benefits all businesses in our two countries, including small and medium-sized enterprises (SMEs) and new market entrants.”

Under the new memorandum of understanding, the UKIPO and USPTO will collaborate on various SEP-related issues, including conducting outreach activities to increase awareness and understanding of SEPs.

The two offices will collaborate on SEP policy, educate SMEs on FRAND terms, examine ways to improve transparency in SEP licensing, and explore involving other jurisdictions in these activities.

The agreement, officially signed by Vidal and Adam Williams, chief executive of the UKIPO, is set to remain in effect for five years from the date of signing.

EU approves SEP regulation

The office’s decision to collaborate more closely follows the European Parliament’s approval of its own SEP regulation, finalised in February 2024.

The regulations aim to boost innovation in the EU by encouraging SEP holders and implementers to develop products using the latest standardised technologies, particularly benefiting SMEs and startups.

The proposed rules, officially published on April 27 after a leaked draft drew mixed reactions from the global patent community, faced opposition from countries like Sweden, Finland, and the Netherlands.

Before the vote, IP Europe—representing companies such as Ericsson, Nokia, and Qualcomm and others—sent a letter on February 23 to all MEPs, urging them to reject the proposals.

These global tech leaders argued that the plans were "deeply flawed" and would raise costs and administrative burdens for EU innovators, including SMEs.

They warned the proposals would lead to delays, uncertainties, and complexities in licensing negotiations, and violate fundamental rights, including property rights (such as IP) and access to justice, as well as EU law in general.

However, the European Parliament emphasised the growth of SEPs and the need for a regulatory framework to address litigation, transparency, and fair FRAND licensing terms.

The February legislation included creating an SEP register and central database, conducting essentiality checks, determining non-binding aggregate royalties, and establishing a time-limited out-of-court dispute resolution mechanism.

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