IP Newsflash

The United States Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) have signed a memorandum of understanding (MoU) that outlines a new framework for collaboration between the two offices on policies relating to Standard Essential Patents (SEPs).

Disputes as to the licensing of standard-essential patents (SEP) and determination of fair, reasonable and non-discriminatory (FRAND) terms are usually resolved through either negotiation or litigation in national courts. However, international arbitration is increasingly being used as an alternative to litigation, a trend endorsed in recent statements by both the U.S. Patent and Trademark Office and the U.K. Government.

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Akin Gump published a client alert on January 28, which discusses the fact that successfully licensing standard-essential patents (SEPs) is key to a company’s ability to manufacture and sell products that practice a standard. With revolutionary advances in technology on the horizon, licensing of SEPs under fair, reasonable, and non-discriminatory (FRAND) terms is poised to take center stage, potentially impacting negotiations among stakeholders worldwide. Questions surrounding how best to license these technologies on FRAND terms and what remedies to grant patent holders are vital matters, hotly debated around the world, and now subject to public scrutiny on both sides of the Atlantic. The U.S. and U.K. governments have expressed their respective views on the subject in policy statements and are now seeking comment from the public.

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Akin Gump published a client alert on the settlement of their long-running and closely watched standard-essential patents (SEPs) licensing dispute. This settlement resolves multiple German lawsuits Nokia filed against Daimler asserting SEPs and Daimler’s complaint against Nokia before the European Commission. Daimler argued Nokia’s licensing activity was not FRAND because Nokia did not offer a license to Daimler’s suppliers, as has been customary in the auto industry. Some in the auto industry may view the settlement as indicating a shift away from licensing upstream suppliers and towards licensing downstream OEMs—however, due to the confidential terms of the agreement, such conclusions are only speculative at this time. To read the full alert, please click here.

On August 23, 2016, Magistrate Judge John Love in the Eastern District of Texas denied plaintiffs’ motion for summary judgment as to defendants’ affirmative defenses and counterclaims. These defenses and counterclaims related to plaintiffs’ alleged duty to disclose standard-essential patents (SEPs) to the Institute of Electrical and Electronics Engineers (IEEE). Judge Love denied the motion upon a finding that a factual question remained regarding whether the plaintiffs had a duty to disclose the asserted patents to the IEEE.