SDO and Patent Offices : EPO view on cooperation Dr Michel Goudelis, Director Telecommunications, EPO GSC-15, August 2010 Beijing, China

Introduction The awareness of the importance of IPR in relation with Standards has substantially improved in the last years. The issue of ICT Standards remains an important priority area for EPO's external relations policy. In that field a lot of public and political pressure exist and strengths and weaknesses of the patent system are magnified.

Increased scrutiny "from outside": competition authorities, politics, courts. Principal problem: IPR policies of most SDOs are confronted with new challenges; rules not clear and/or not sufficiently enforced. As expression of the challenges in the governance of the global knowledge economy. Rising tensions through competing business models but also because of geopolitical reasons. Tensions are appearing 1/2

Tensions are appearing 2/2 If patent rights are enforced in a way that may hamper the widest use of standards, some antagonism between the two systems may arise. Both SDOs and Patent Offices are expected to play a positive role towards environmentally sound technologies (joint project EPO-UNEP, including database for EST-related patents, ITU initiatives in EST technologies).

Possible conflicts 1/2 One possible scenario is that a patent owner who has been participating in the standard ‑ setting process may conceal existing patents or pending applications which are essential to implementation of the standard under discussion (essential patents) with a view to enforcing the patent rights only after the adoption of the standard and refuse to license the patent on reasonable terms and conditions.

Possible conflicts 2/2 Another scenario is that an essential patent may be owned by a patentee who did not participate in the standard-setting process and who may enforce the patent rights in a manner that discourages or blocks implementation of the standard. The latter “hold-up” problem may also arise where a standard is affected by a number of patents owned by different patentees. Even if each patent owner is willing to license his patent on reasonable terms and conditions, the total royalty claim may inhibit implementation of the standard.

Standards Books, Thesis, Technical reports, Monographs EPO Non-Patent Literature (NPL) Resources Databases of Secondary publishers INSPEC,COMPDX,BIOSIS, MEDLINE,IHS... Journals Conference Proceedings Company Disclosures Encyclopaedias, Dictionaries

Benefits of using Standards at patent examination –Benefits: for the Patent Office : higher quality products, better efficiency and improved planning. for the public: continuation of high-validity patent culture and high level of information. for the Standardisation bodies: clear picture of IP-situation.

Standards related documents –Access to all non-confidential technical documents (standards, temporary, drafts, contributions,...) –Technical field (publishing working group) on each document –Effective publication date of submitted contributions –Clear dissemination policy

Non-confidential technical documents Contributions First disclosure of new technical information shortly before or during a working group meeting Temporary - not by all SDOs Documents that are deleted after a certain period or if a new version is published Drafts - not by all SDOs Pre-versions of a standard, base for discussion and voting Standards Final document after discussions, agreement and voting

Internal measures Increased awareness (reaching at highest level) Technology watch in this particular field (resource planning) Supply additional resources in the following areas –Documentation (standards related documents: acquisition and processing) –Examination: ◦additional training ◦systematic links with technical committees of SDOs

Contribute towards transparency: both in technical (up-to-date, informative databases) and structural (clear landscapes and boundaries) regard. Establish patent related services for SDO's such as: patent search services and patent landscaping services also for patent pools. Cooperation among major Patent Offices (IP5, composed of USPTO, JPO, KIPO, SIPO, EPO) for a common policy, including a common, standards-related documentation database. In cooperation with WIPO, long term include such documentation as PCT minimum requirement. External Measures

Bridging the two worlds: Resolutions at Global Standards Collaboration Conferences GSC 12, 13 and 14, encouraging SDOs "to cooperate with the relevant Patent and Trademark Offices to provide access to technical information for use by such Agencies that should help them improve the quality of patents being granted". Bilateral Cooperation : in form of Memorandum of Understanding or Partnership Agreement between SDOs and Patent Offices ( MoU EPO with ETSI, IEEE already signed and MoU with ITU in discussion) in order to formalise and intensify cooperation. Achievements 1/2

Interface amelioration : Suggestion from ITU TSB Director's Ad Hoc Group on IPR to ITU to agree on a minimum standard for standards documentation including publication date, working group and further data to improve identification of prior art for patent examination. ETSI recommendation to encourage the use of a document template to facilitate the work of patent examiners and to improve prior art identification. IEEE-SA documentation format definition and dissemination policies aligned as much as possible to the patent search needs. Cooperation with ETSI to link their IPR declaration database to the EPO patent database. Achievements 2/2

Standardisation organisation should link their IP declarations databases to the public registers of the major Patent Offices, such that the included information (validity of application, scope of granted patents, patent family, etc.) is constantly updated and valid. Patent rules of standardisation organisations, in particular dissemination and confidentiality rules, should be clear. Proper functioning of both systems necessitates resolution of potential conflicts. Patent authorities should become pro-active and include standards-related documentation in their search databases. Conclusions