Guidance: Glossary of terms

Academia: A university or organisation engaged in research and analysis within the field of SEPs, often applying economic and/or social theory and contributing findings to academic journals or seminars.

Alternative Dispute Resolution (ADR): Any method of resolving disputes outside of litigation. Common ADR methods include mediation, arbitration, conciliation, negotiation and Early Neutral Evaluation (ENE).

Anti-Suit Injunction: An ASI is a court order/form of injunction (see “Injunction”) preventing a party from either commencing or continuing proceedings in a foreign court.

Arbitration: A private and neutral dispute resolution service heard by one or more arbitrators.

Bilateral (negotiations): An agreement or negotiation between one party and one other party.

Comparables / comparable licence rates: Other licence agreements that have previously been entered into in respect of similar (or the same) SEPs with similarly situated implementers. In disputes over FRAND rates, courts may wish to identify and compare terms agreed in a comparable licences to determine if a licensee has been offered a licence on FRAND terms.

Cross-licensing: The exchange of patent licences between two or more parties where those parties grant licences under each others’ rights.

Disclosure: A disclosure informs an SDO of patents and other IPR that may be or become essential to the relevant standard.

Declaration: A declaration refers to a commitment by a patent owner that ensures their patent is available for implementation of a standard.

Due diligence: The investigation and analysis that a reasonable person is normally expected to undertake before entering into an agreement or licence with another party.

Early neutral evaluation (ENE):A non-binding dispute resolution service which allows parties to better understand the merits of their respective positions from a neutral third person usually a judge or lawyer.

End-user: the consumer of a good (product) or service.

Exhaustion of IP Rights Regime: The specification of the geographical area in which the placing of a good on the market exhausts its relevant IP rights in the UK. This principle is known as the “first sale doctrine” in other jurisdictions. Currently, the UK’s exhaustion regime ensures (in general terms) that once a good has been lawfully placed on the market by or with the consent of the IP right owner in either the UK or the European Economic Area, the relevant IP rights in that goods are considered “exhausted” in the UK . After this, the IP rights holder cannot use their IP rights to control the distribution of the good (e.g., prevent the import of that good from the EEA into the UK).

FRAND: Fair, Reasonable and Non-Discriminatory, being a concept that is not formally defined but relates to the terms of a licence and the behaviour of parties in a negotiation aimed at finding a balance between the needs of both parties and a degree of equivalence or parity with corresponding terms of similar agreements entered into in similar circumstances between the licensor and other licensees.

Good faith: As a legal concept refers to the overriding principle in negotiations that parties should conduct themselves honestly. This goes beyond not deceiving each other; it is a principle of fair and open dealing.

Hold-out: Refers to the practice where an implementer refuses or delays agreeing to a licence in order to escape payment of royalties or to pressure the SEP holder to agree to a lower licence fee than may be fair or reasonable.

Hold-up: Refers to the practice where a SEP holder demands an excessive licence fee above a fair and reasonable rate.

Implementer: A company or other entity that manufactures goods and/or services in compliance with an industry standard, by directly or indirectly using technology relevant to the standard.

Industry body / trade association: A not-for-profit organisation founded and funded by businesses that operates in a specific industry, representing its members’ collective interests.

Infringement: The Patents Act 1977 (PA 1977) gives the patent owner exclusive rights in the UK to carry out various acts in relation to the patented invention. Restricted activities set out in the PA 1977 carried out by those other than the patent owner, without that owner’s consent, may infringe the owner’s exclusive rights.

Injunction: Injunctions are a type of court remedy where a judge orders a party to do something or to refrain from doing something.

Intellectual property right (IPR): The general term for the assignment of property rights through patents, copyrights and trademarks. These property rights allow the holder to exercise a monopoly on the use of the item for a specified period.

IP Licence / licensing: An IP licence is the transfer of rights in an IP right from the owner to another, short of an assignment of all rights. The licensor retains ownership of the IP right and allows the licensee to engage in acts which would constitute infringement if not for the licence.

Licensing administrator: An independent agent formed to lead the development, administration, and management of licensing programmes for SEPs (including patent pools, joint licensing programs, and other forms of IP aggregations).

Market power: Defined by the Organization for Economic Co-operation and Development (OECD) as ‘the ability of a firm (or group of firms) to raise and maintain price above the level that would prevail under competition. The exercise of market power leads to reduced output and loss of economic welfare.’

Mediation: A private and neutral discussion forum, conducted under the terms of a mediation agreement, by which parties to a dispute may discuss the issues in dispute and explore and negotiate settlement terms.

Non-disclosure agreement / NDA: A legal contract, also sometimes called a ‘confidentiality agreement’, which identifies the subject-matter of an intended disclosure of confidential information from a disclosing party to a recipient party and sets out the obligations of the recipient party in respect of the confidential information which is intended to be disclosed to it.

Patent Pool: An agreement between two or more patent owners to license one or more of their patents to one another or to third parties.

Patent: A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.

Portfolio (see IP licensing): Normally refers to a collection of patents, and potentially other IP rights, owned by the same owner. In many instances a SEP holder will offer licences to its portfolio of SEPs instead of individual SEPs.

Royalty rate: A value charged by the patent owner in exchange for the right to use their IPR under licence.

Standard Essential Patent (‘SEP’): A patent which protects technology which is essential to implementing a standard is known as a standard essential patent.

SEP holder:An entity that holds one or more patents that it has disclosed as being, or that it believes will become, essential to the implementation of a standard. A SEP holder is sometimes referred to as a “SEP owner”.

Standard Development Organisation (SDO): An organisation that is primarily engaged in activities such as developing, coordinating, promulgating, revising, amending, reissuing, interpreting and otherwise maintaining standards (with input from industry and technical experts) to meet the needs of an industry or field. Also known as a “Standard Setting Organisation” (SSO).

Standardisation: the process of creating, issuing and implementing Technical standards.

Technical standard: Also referred to as a ‘standard’ or ‘interoperability standard’. A technical standard is a collectively agreed or established technical description of an idea, product, service, or way of doing things where you need to share the understanding with others. These are usually produced by standard development organisations (SDOs), established for the purpose of standardisation (see above), with inputs from industry, government, academia and other technical experts.

Technical body: A generic term designating technical committees, sub-committees and working groups that bring together delegates to produce standards.

Value Chain: This refers to the full lifecycle of a product or process, from production to consumption.

Vexatious litigation: Litigation which has little or no basis in law, the effect of which is to subject the defendant to inconvenience, cost, and expense which is out of all proportion to any gain likely to accrue to the claimant, and which is use of the court process for a purpose or in a way which is significantly different from the ordinary and proper use of the court process.