IP (Intellectual Property) policy for SEP (Standard Essential Patents)

Published:
Japan Patent Office’s “Guide to Licensing Negotiations involving Standard Essential Patents” released in June 2018 has not created issues after its release. However, the guidance published in 2020 and the 2021 work to create a new guidance by METI has created confusion among SEP licensors and licensees. Also in 2021 the JPO initiated a new process to update its 2018 Guide document. It seems that Japan would like to create a perfect process to conduct SEP licensing, that might be quite challenging. For licensors having a “perfect” process would be beneficial, as the main problem is the so called “hold out”, where the licensees try to avoid, or delay, the payment as much or as long as possible. EBC will monitor the impact and fairness of these the newly established principles and processes, and further updates on them, in regard to the European telecommunication industry.

Recommendations

  • Japan should follow the international licensing practices and legal doctrines without trying to re-invent the wheel. To help to understand the international situation better, Japan should continue the communication with European Commission, European Patent Office, and other European organisations to harmonise the regulations, or at least not to divert from international practices, related to Standard Essential Patent licensing. Overregulation is not good, but one should let the existing legal system to resolve any disputes.