6 November, 2019. Patent pools whose licensing practices are fair, reasonable and non-discriminatory (FRAND) would benefit both standard-essential patent (SEP) owners and innovative standard-implementing businesses, facilitating the uptake of the Internet of Things (IoT) in Europe. The Fair Standards Alliance (FSA), a voice of more than 45 innovative companies, has prepared a set of recommendations on SEP licensing through patent pools.
The concept of licensing Standard-Essential Patents (SEPs) through patent pools has recently received increased attention. This Position Paper provides a set of recommendations and observations concerning SEP licensing through patent pools. It is intended to be helpful to a broad audience: to regulators in considering
policies concerning SEP patent pool licensing, to patent pools and firms involved with them, to adopters bringing products and services potentially practicing SEPs to market, and to legal entities and practitioners dealing with claims relating to SEPs and to the public. Compliance with competition law is paramount for a patent pool, and this paper does not attempt to duplicate the principles that global competition authorities have set forth with respect to patent pool compliance with competition laws. But, critically, for SEPs which are offered by a SEP holder for licensing via a licensing agent (such as a pool), a licensee and the respective SEP holder also should have the freedom, by mutual agreement, to transact a license between themselves. Accordingly, a party’s refusal to join a pool, or to take a license from a pool, should not be considered as an indication of unwillingness to grant or to take a SEP license. A licensee that decides that it would prefer to
negotiate a direct license with a patent owner rather than the pool should inform the pool of that decision at an appropriate time. Further, to ensure that license fees are not requested for substitute, expired or invalid patents, patent pools should be equipped for independent essentiality checks and should allow validity checks among its licensors/patent owners. Successful validity challenges should be taken into account for license valuation.
Download full paper here.