Guidance: International Signposting

Introduction  

The global nature of standard essential patents (SEPs) is explored throughout the guidance chapters of the SEPs Resource Hub. To navigate the SEPs ecosystem more efficiently, UK businesses may find it useful to have an awareness of the international resources available, should they wish to seek protection of a SEP internationally and/or learn what information on SEPs is available from international jurisdictions. This section of the SEPs Resource Hub provides a list of additional resources in relation to applying for a patent internationally and specific SEP related literature provided by other international jurisdictions and institutions, which may be useful.

International intellectual property signposting

The Intellectual Property Office (IPO) offers a variety of information about protecting your intellectual property (IP) globally. Below are links to information on the international IP services available and how you can protect patents abroad, should you wish to understand more about protecting your SEP internationally. 

International IP Service

• the webpage International IP service  provides guidance created by the IPO for protecting your IP abroad, including a list of IP country guides to manage IP in a variety of overseas territories
• information on protecting your patent in North America is not included in the above webpage. If you wish to learn more about the patent process in North America the United States Patent and Trademark Office (USPTO) offers information to apply, maintain and search for patents registered by the USPTO. Further detail can be found using the Patents USPTO webpage

Protecting your patent abroad

• the webpage Protecting your patent abroad includes detailed information on the European Patent Office (EPO), should you wish to protect a patent in more than 30 countries in Europe
• the Protecting your patent abroad webpage also includes information on the Patent Cooperation Treaty (PCT), should you wish to protect your patent in a variety of international countries. The PCT now has 157 contracting states, a list of whom can be found on the World Intellectual Property Organisation (WIPO) webpage. Further information on the PCT system can be found on the WIPO PCT – The International Patent System  webpage

The IPO strongly recommend if you do wish to protect your IP abroad you seek advice from an IP attorney, legal or other professional advisor.  

International jurisdictions/institutions information on SEPs  

Some international jurisdictions/institutions have created their own resources to provide information on SEPs.  A non-exhaustive list signposting to these international resources is below. 

European Commission:

• in 2023, the European Commission published its Horiztonal Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union (TFEU) to horizontal co-operation agreements.  Section 7 specifically refers to standardisation agreements

European Patent Office (EPO):

• in 2021, the EPO updated its Patents and standards webpage regarding patents and standards. The webpage provides information on how EPO patent examiners review standards documents within the patent examination procedure and signposts to the Guidelines for Examination in the European Patent Office for further information

Japanese Ministry of Economy, Trade and Industry (METI):

• the Japanese Ministry of Economy, Trade and Industry (METI) has established the  Good Faith Negotiation Guidelines for Standard Essential Patent Licenses
• the Japanese government has provided the guidelines for SEP holders and implementers to follow when they are involved in SEP licensing negotiations

Japan Patent Office (JPO):

JPO have a Standard Essential Patents Portal Site which includes information on:

• JPO’s published 2nd edition of the ‘Guide to licensing negotiations involving SEPs’. JPO states the purpose of the guide is to enhance transparency and predictability, facilitate negotiations between rights holders and implementers and help prevent or quickly resolve disputes concerning the licensing of SEPs
• JPO’s “Hantei” (Advisory Opinion) for Essentiality Check. This is JPO’s essentiality service where participants can ask JPO for an opinion on the essentiality of a SEP
• links to the studies JPO have carried out of domestic and overseas developments of SEPs

United States Patent Trademark Office (USPTO):

• USPTO in December 2019 released a Policy Statement on remedies for SEPs, however in June 2022 the USPTO withdrew this policy statement. The full withdrawal statement can be found in this webpage
• in 2023 the US Government published its National Standards for critical and emerging technology. This strategy outlines how the US Government plans to strengthen US leadership and competitiveness in international standards development
• The A-119 is the U.S Government’s strategy-setting for standards development. It promotes agency participation in standard-setting bodies, specifies reporting requirements on conformity assessment activities, and informs agencies of their statutory obligations related to standards setting

World Intellectual Property Organisation (WIPO): 

• WIPO offers a variety of alternative dispute resolution (ADR) services, with a focus on disputes concerning the determination of fair, reasonable and non-discriminatory (FRAND) terms. WIPO’s  ADR for FRAND Disputes webpage signposts to the various WIPO ADR services available, and some of the cases it has been involved with
• in 2024 WIPO published a three-year strategic plan regarding SEPs. The strategy provides detail of WIPO’s current activities and upcoming planned work regarding SEPs
• WIPO have a dedicated Standard Essential Patents webpage where they provide information on SEPs and standards, Fair, Reasonable and Non-Discriminatory Licensing and signpost to WIPOs ADR services

Competition and Consumer Commission of Singapore (CCCS):

• the CCCS produced Guidelines which reflects how they expect the interaction between intellectual property rights (IPRs) and competition law to operate under Singapore’s Competition Act 2004

New Zealand Commerce Commission:

• the Commerce Commission of New Zealand have drafted Guidelines on the Application of Competition Law to Intellectual Property Rights
• a refusal to licence during a SEPs and FRAND licensing negotiation is one of the examples in the Guidelines

Disclaimer 

This international signposting information is for guidance purposes only. It does not constitute legal, business, financial or other professional advice and should not be relied upon when taking IP related, business, legal or other decisions. The IPO is not responsible for the use that might be made of this information. Appropriate professional advice should be sought. This international signposting resource is not a substitute for proper legal advice. Every effort is made to ensure that the information provided is accurate and up to date as at the time of publication, but no legal responsibility is accepted for any errors or omissions (including on third party websites).  

The IPO provides guidance on how to find Specialist and Legal IP Support: 

Seeking intellectual property advice.