Guidance: Introduction

Introduction to the Resource Hub

The Standard Essential Patents (SEPs) Resource Hub (‘Resource Hub’) collects guidance and signposting to information to help UK businesses navigate the SEPs ecosystem.

The guidance is divided into 4 parts:

Part 1: Guidance on Technical Standards and Standard Development Organisations

Part 2: Guidance on Standard Essential Patent Licensing

Part 3: Guidance on Dispute resolution and remedies in SEP Licensing

Part 4: Additional resources

Each part of the Resource Hub aims to help businesses to understand where they may interact with the various aspects of the SEP ecosystem and how to navigate those aspects more confidently.

The SEPs Resource Hub is for guidance purposes only and 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. The SEPs Resource Hub 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.

Summary of the Resource Hub:

Technical Standardisation and Standard Development Organisations (SDOs)

The journey of SEPs licensing starts with the development of technical standards. Technical standards enable technologies that are safe and interoperable. They can include mobile handsets that seamlessly communicate between different brands and across national borders; cars that can update with the latest traffic information; driverless cars and drones; digital healthcare and smart homes, and so much more.

This guidance explains what standards are, the process of standardisation and what a SEP is. It also provides some introductory information on Standard Development Organisations (SDOs).

Standard Essential Patent Licensing

Licensing intellectual property can be daunting, especially if businesses are new to the licensing process. The SEP Licensing guidance explains the legal framework that governs the licensing of SEPs, including licensing on Fair, Reasonable and Non-Discriminatory (FRAND) terms.

The SEP Licensing guidance provides an overview of the steps in a typical IP licensing negotiation journey and the additional complexities of licensing SEPs. It provides guidance on how to obtain a licence, what licensing models are typically used, and when it might be appropriate to seek technical or legal advice. Where appropriate it will signpost to further expert services or resources currently available to help you on your way.

Dispute resolution and remedies concerning Standard Essential Patent licensing

Not all SEP licensing negotiations may go as smoothly as planned and one party might find themselves in a disagreement with the other party about the reasonableness of the terms being proposed. These disagreements can be mitigated or even resolved by utilising existing dispute resolution services. Importantly, prior to taking a dispute to court, a number of services could be considered to settle the dispute in a more efficient and cost-effective way.

Sometimes alternative dispute resolution (ADR) services themselves do not resolve the issues in dispute and one or both parties may decide that the dispute must be resolved by a judge in court proceedings. Reasons for this may vary from case to case. In the SEPs context it will commonly result from the parties not being able to agree on a fair licensing rate.

The dispute resolution guidance includes:

i) Typical disputes that may arise in SEP licensing.

ii) Different forms of ADR services that are available

iii) The remedies to which a party or parties to a dispute may be entitled such as injunctions and anti-suit injunctions (ASIs).

Additional resources

This part of the Resource Hub signposts to additional resources that have not been included in the above guidance pieces, but which may be helpful to UK businesses trying to navigate the SEP ecosystem. The additional resources include:

• Glossary of terms: provides an explanation of SEP specific words and terms used throughout the guidance available within the SEPs Resource Hub

• UK case law: provides a table of relevant UK cases concerning SEPs, outlining various SEP issues dealt with by the UK courts and links to the full court judgement. Signposting for global SEP dispute cases is also included

• International signposting: information on applying for a patent internationally and signposting to SEPs specific information provided by other jurisdictions or institutions