Anne Von Zukowski

A balanced framework for
the licensing of Standard Essential

Patents
Anne von Zukowski

Intellectual Property and Fight against Counterfeiting
European Commission, DG GROWTH
SBS training
IPR-based standardisation
What are the opportunities and challenges for SMEs?
Brussels, 29 June 2017
The dilemma at the intersection of IP and
standardisation
Create incentives and reward for R&D, innovation and contribution

of top technology to standards
Access to standardised technology at fair terms to ensure wide

dissemination of a standard and its technology
Need for a framework enabling smooth and efficient process for SEP
licensing
New environment with the advent of the Internet of Things
Clear stance taken in other jurisdictions need for European vision on

the topic
2
Three key ingredients for balanced and
effcient SEP licensing
A transparent environment for negotiations between SEP holders and

potential licensees
Common valuation principles for SEPs technology
A balanced and predictable enforcement regime
3
Imperfections in all three pillars
Opaque information about SEP exposure

Very high number of declared SEPs
Based on self-declaration without scrutiny
Increasing number of SEP holders for a single standard
Key valuation and licensing principles debated

Calculation base for royalty
Licensing level in the production chain
No transparency on licensing conditions
Lack of predictability
Compatibility of Open Source and FRAND
An evolving enforcement regime

Interpretation and development of the Huawei judgement
4
Room for improvement?
Commission Communications on Digitising European Industries
and ICT Standardisation Priorities (April 2016):
The Commission will work in collaboration with stakeholders including ESOs, EPO, industry
and research, on the identification, by 2017, of possible measures to
(i) improve accessibility and reliability of information on patent scope, including measures to
increase the transparency and quality of standard essential patent declarations as well as
(ii) to clarify core elements of an equitable, effective and enforceable licensing methodology
around FRAND principles and
(iii) to facilitate the efficient and balanced settlement of disputes.
07/07/2017
Guiding principles
Holistic approach across all three pillars

Focus on licensing process conditions not on prescribing an
outcome
Preserve flexibility for evolving business and technology
environment
Soft law instrument providing signposts for European vision of
balanced SEPs licensing environment
07/07/2017
Possible measures suggested in Commission
consultations and studies:
Transparency
Increase precision of declaration

Revision at the time of final adoption of the standard
Update following litigation
Essentiality checks?
07/07/2017
Possible measures: Valuation and licensing
principles
Mapping of valuation methodologies for FRAND

Differentiation according to use case of the implemented
technology?
Clarify licensing rights along production chain
Transfer
Role of Patent pools
07/07/2017
Possible measures: Enforcement
Some guidance on the Huawei-process

Portfolio litigation and damages
Enhancing the role of arbitration
Proportionality
07/07/2017
SEPs and Open Source
In the context of current technology evolution, open source

software implementations becomes more and more extended,
included for ICT standardisation
Integration between open source based solutions and
interoperability standards is win-win situation
Commission supports OS solutions. FRAND can also
accommodate royalty-free concepts
Need to clarify the interaction between open source
communities projects and SDOs processes
07/07/2017
Next steps
Ongoing follow-up discussions with stakeholders in bilateral

and multilateral settings
Internal work of the Commission
Commission Communication scheduled for this year
07/07/2017
Thank you for your attention!
anne.von-zukowski@ec.europa.eu
https://ec.europa.eu/growth/industry/intellectual-
property/patents/standards_de
07/07/2017

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A balanced framework for

the licensing of Standard Essential

Create incentives and reward for R&D, innovation and contribution

Access to standardised technology at fair terms to ensure wide

New environment with the advent of the Internet of Things

Clear stance taken in other jurisdictions need for European vision on

A transparent environment for negotiations between SEP holders and

Common valuation principles for SEPs technology

A balanced and predictable enforcement regime

Opaque information about SEP exposure

Key valuation and licensing principles debated

An evolving enforcement regime

Holistic approach across all three pillars

Increase precision of declaration

Mapping of valuation methodologies for FRAND

Some guidance on the Huawei-process

In the context of current technology evolution, open source

Ongoing follow-up discussions with stakeholders in bilateral

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