SEP-related Legislative and Policy Measures Adopted by Member States, including Notable Case Law
A Standard Essential Patent (SEP) is a patent that protects an invention essential to the implementation of a particular technology standard. Standards are critical for ensuring safety, interoperability and compatibility of different products and services made available by various companies. While standards developed by Standards Development Organizations (SDOs) are prevalent in all sectors, they are generally widespread in the areas of information and communication technologies (ICT).
Although as a matter of patent law and general practice, SEPs are not treated as a separate category of patents as far as patent prosecution is concerned, over recent years, some Member States have adopted legislative and policy measures (or policy guidance) to offer more clarity for stakeholders. Similarly, SEP litigation within Member States has culminated in some notable case law informing stakeholders on several aspects, such as determination of Fair, Reasonable and Non-Discriminatory (FRAND) licensing terms.
This page is dedicated to update SEP-related legislative and policy measures adopted by member states, including notable case law. In addition, the WIPO Lex SEP Case Law Collection collects SEP-related case law worldwide as part of initiatives under the WIPO SEP Strategy.
SCP working documents
- Report on the Sharing Sessions on Standard Essential Patents and Issues related to Fair, Reasonable and Non-Discriminatory Licensing, held during SCP/35 and SCP/36 (SCP/37/9)
- Proposal by the Delegation of Canada for a Report and Compilation of Information on Standard-Essential Patents (SCP/36/11)
- Proposal by the Delegation of Canada for an Information Exchange on Standard-Essential Patents (SCP/34/7 REV.)
- Standards and Patents (SCP/13/2)
Legislative Measures
In the absence of specific legislative measures, SEPs are governed by general provisions of patent law among several Member States. There are only a few examples reported by Member States where legislative provisions expressly address SEPs. The general justification that supports targeted legislative measures includes the need to address the causes of inefficient licensing and lack of transparency.
Policy Measures
In terms of the SEP-related policy measures, there is a wide divergence in approaches, which are broadly understood in terms of:
- Domestic policy guidelines that provide a voluntary framework for parties enabling good-faith negotiations in the context of FRAND licensing; or publication of an advisory manual for essentiality checks for practitioners; or issuance of joint statements by national authorities which offer policy clarity on the availability of injunctions in the context of SEP enforcement;
- Competition policy guidelines or issuance of guidance letters (business review letters) upon the request of parties that provide certain safe harbors for activities of SDOs, patent pools and licensing negotiations groups (LNGs). Similarly, guidelines are published by competition agencies to regulate abuse of market dominance through SEP assertion; and
- Other policy measures include the creation of an enabling environment for improving the SEP innovation ecosystem (e.g., support to academia, public research institutions and SMEs to conduct R&D); or measures towards enhancing transparency by creating an information hub to communicate initiatives and links to relevant organizations to enhance transparency in the SEP ecosystem.
Notable Case Law
Case law in the area of SEPs primarily relates to issues arising from contractual disputes in the context of the FRAND commitment, patent infringement issues and competition/antitrust related matters. Some cases noted by Member States are related to the application of competition law on a regional or national level.