Andrew Myles’ Post

The USPTO and Intellectual Property Office UK earlier this week signed an MOU to collaborate on policies for Standard Essential Patents (SEPs) - patents essential to technical standards that owners agree to license on fair, reasonable, and non-discriminatory (FRAND) terms. The key points for in-house counsel to know are: - Aims for a balanced international SEP ecosystem benefiting businesses, including SMEs - Will cooperate on SEP policy matters and facilitating FRAND licensing - Explore educating SMEs on implementing standards under FRAND - Improve transparency in FRAND licensing of technical standards - Conduct outreach to raise SEP awareness - Discuss incorporating more jurisdictions into SEP activities

SEP licensing in Europe In an increasingly connected world with the rise of smart products and ubiquitous connectivity, telecoms and standard-essential patents are playing a bigger role than ever. At the same time, many industries that are affected by digitalisation and have had little experience with SEPs are struggling with SEP licensing. At the end of February, the EU Parliament voted therefore in favour of an SEP regulation that will introduce an SEP competence centre at the EUIPO. #SEP #digitalization

The USPTO and the UK Intellectual Property Office (UKIPO) have signed a groundbreaking memorandum of understanding (MOU) to collaborate on policies related to standard essential patents (SEPs). 📅 Date Signed: June 3, 2024 🤝 Key Points: → Facilitate collaboration and information exchange on SEP policies. → Educate small and medium-sized enterprises on fair, reasonable, and non-discriminatory (FRAND) licensing. → Improve transparency in FRAND licensing. → Engage stakeholders to raise awareness about SEP issues. → Explore incorporating additional jurisdictions into SEP-related activities. “Standards touch all aspects of modern life, including video compression, wireless communication technologies, computer connection standards, automotive technology, and more," said Under Secretary Kathi Vidal. This collaboration will benefit businesses of all sizes, fostering innovation and fair competition. LegalAdvantage applauds this initiative and looks forward to its positive impact. https://lnkd.in/eh8_e_6f #IP #Innovation #SEPs #USPTO #UKIPO 

On June 3, 2024, Kathi Vidal, USPTO Director, and Adam Williams, CEO of the UKIPO, signed a Memorandum of Understanding to enhance collaboration on standard essential patents (SEPs). Broadly, SEPs are patents deemed essential to a given technical standard. Patent owners may agree to license SEPs based on fair, reasonable, and nondiscriminatory (FRAND) terms. “Standards touch all aspects of modern life, including video compression, wireless communication technologies, computer connection standards, automotive technology, and more. This important collaboration with UKIPO will help us work together toward a fair and balanced international standard essential patent ecosystem that benefits all businesses in our two countries, including small and medium-sized enterprises and new market entrants” said Kathi Vidal. This new five-year agreement sets out a framework which aims to create a balanced international SEP ecosystem benefiting businesses and is a step forward in international IP collaboration. Key initiatives include joint policy collaboration on SEPs, educational content for SMEs on FRAND terms, enhanced transparency in licensing agreements, and stakeholder outreach on a variety of SEP issues. #IP #SEPs #FRAND #USPTO #UKIPO Julien Lacheré, Eng. Ilya Kalnish Andreanne Auger Dominic Goudreault Amber Beckley Tuba Yamac Aleen Pangka Dr. Benjamin DELSOL Lukesh Prashar Edwin Feng Philippe Therias

Even for a dynamic industry such as telecommunications, the pace of change in the patent landscape has been remarkable. The wave of new patent declarations are pulling IP's geographical centre of gravity in new directions, and the global structure of patent holdings is becoming even more complex. PA's reports bring transparency and clarity to the standards-essential patent holdings and are a trusted reference for SEP licensing negotiations, arbitrations, and litigations around the world. #SEP #IntellectualProperty #Transparency

The European Commission has proposed a new regulation aimed at streamlining SEPs licensing. This proposal seeks to enhance transparency, reduce information asymmetries between SEP holders and implementers, and facilitate agreements on FRAND licenses. In February 2024, the European Parliament voted in favor of this proposal. The final decision now awaits the vote of EU member states.   📢 What do industry giants like Nokia and Qualcomm think about this highly debated proposal? Find out in this insightful FT article, featuring expert commentary from 2SPL partner Bernd Holzgartner.   Is this regulation a stride towards fairness and transparency, or does it pose an inefficient obstacle to innovation? We’d love to hear your thoughts! Share your opinions in the comments below. https://lnkd.in/dXYQXEVa

A few weeks ago, I wrote a blog about a problem with the ratification of IEEE 802.11ax (aka Wi-Fi 6) as an ISO/IEC/IEEE "international" standard. I called on ISO to resolve the issue simply by following their own rules. Of course, nothing has happened, at least partially the result of my blogs having limited reach. So, my first request is for you (the reader), if you care about the issues discussed, to forward my blogs to people who have more influence. I also did not really expect ISO to do anything because they haven't moved since 2021 despite their part in a solution being obvious. So, in this blog I am suggesting an alternate path to resolution that recognises the likely underlying motivations of the companies that have declined to provide RAND licenses for IEEE 802.11ax under the IEEE SA Patent Policy. I call on Ericsson, Interdigital, Panasonic, Huawei, KPN & Nokia to provide (hopefully positive) patent declarations to ISO under the ISO Patent Policy in relation to any patents they may own that read on IEEE 802.11ax! The attached file explains the situation and the call for action in more detail. It includes some links; you may have to download the pdf to access the links. Andrew

Would you like a policy to go with your essential patent? When Patent Attorneys talk about "Standards essential #patents (#SEP)", they are often referring to patents related to standards for wireless communications such as those developed under the #3GPP umbrella ('3G', '4G', '5G', etc.). Most of these patents are subject to IPR rules set by ETSI. However, there's a whole world of other standards out there, and not all IPR rules are the same. The Intellectual Property Office UK has very helpfully collated a summary of major standards organisations with links to their respective IPR policies (link in the comments), as part of their SEP resource hub, which #SME will particularly benefit from. If you are developing technology that might be incorporated into a standard (even if that standard doesn't yet exist) it's important to know what the rules are - the EIP team can advise on a strategy.

Update from the European Patent Office on receiving PCT communications electronically from them: Since November 2022, international agents have the option to receive communications electronically through the electronic Mailbox within MyEPO Portfolio. This includes all communications from the EPO in the international phase, in instances where the EPO is not the Receiving Office (RO) but acts as the (Supplementary) International Search Authority (SISA/ISA) or International Preliminary Examination Authority (IPEA). 📨 Examples of such communications include the international search report and the written opinion. 📨 This digital service not only reduces paper consumption but also ensures the timely delivery of communications without the risk of loss through paper mail delivery. 📨 The MyEPO Portfolio Mailbox offers several user-friendly features: 📮Users can opt to receive email notifications when new communications arrive in their Mailbox. 📮Communications can easily be viewed and downloaded by logging in through two-factor authentication at MyEPO Portfolio. 📨 Over 600 companies currently benefit from this service, allowing them to access communications immediately in a high-quality electronic format. In addition, this service significantly contributes to our sustainability goals and has already generated savings of over 2.7 million sheets of paper since its launch. 🌐 If you would like to find out more about this service provided by the EPO, join the free seminar on 30 April 2024: https://lnkd.in/ek_gX7tc 🌐 As additional resources, you may find the following links to previous seminars useful: 🔗General introduction to MyEPO Mailbox https://lnkd.in/ecREuBYk 🔗How to access the EPO’s online services using two-factor authentication (2FA) https://lnkd.in/eC4wd7vw 💚 If you have any inquiries regarding the use of the Mailbox for receiving PCT communications, please reach out to EPO at www.epo.org/support or contact your EPO key account manager, if one is assigned to you.

In response to one commenter's thoughts that these were not lightly examined applications: I agree that many Huawei applications appear to examined in a similar manner as application filed by other entities. However, in my opinion, (formed by 15 years as USPTO manager overseeing quality of patent examinations), a surprisingly high number of patent applications filed by watchlisted adversarial entities, such as Huawei, are not rigorously examined. https://lnkd.in/gUf8KJUj Here's a deeper look into the US examination record for the first listed. Huawei's 18/162,114 is a continuation of a PCT application first examined by CNIPA, assigned to a US patent examiner with a 91% allowance rate and allowed in a first action. The application did not qualify for any kind of expedited examination program, such as Track One or PPH. The examiner added the words "non-transitory" to the original independent claims, to exclude signal per se computer-readable medium. There are NO Information Disclosure 1449 forms in the file. Huawei filed ZERO references for the examiner's consideration. The reasons for allowance were only based on two references found by the examiner, Baruch from 2016 and Savagaonkar from 2009. Yet the 892 form does not list the Savagaonkar reference from 2009. Instead the 892 form lists Baruch from 2016 and Devaraj from 2013. So, the Savagaonkar reference from 2009 will not be listed on the face of the issued patent and there is no clear record as to why the examiner listed the 2013 Devaraj reference on the 892 form. From this former USPTO Quality Assurance Specialist's POV, 18/162,114 seems like a lightly, even hastily, examined patent application. Fortunately, this application has not yet issued as a patent. MPEP 1308 authorizes TC2100 Group Directors John Cottingham, Cordelia (Dede) Zecher and David Wiley to withdraw the Notice of Allowance so that errors made during examination can be corrected. Will they do so?