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Rules for Playing Nicely – EU Commission and injunctions for Standards Essential Patents

The CJEU prepare to hand down their decision in  Huawei v. ZTT (Image via Creative Commons Licence; Author Magnus Manske)

The CJEU prepare to hand down their decision in Huawei v. ZTT (Image via Creative Commons Licence; Author Magnus Manske)

A riddle, wrapped in a mystery, inside an enigma – Churchill may have been talking about Russia, but when I hear this phrase FRAND licensing is more likely to come to mind, and more particularly, FRAND licensing for standards essential patents (SEPs).  It must have all sounded so straightforward once – all the standards bodies agreed that you could bring your patents to the party, you would license them to all your competitors, you’d get a royalty back to compensate you for your R&D efforts, and it would all be fair, reasonable… and nice – well, technically “non-discriminatory”, but “nice” seems to get the wooliness of the intention over better – with the end result of a collection of patents all licensed to the rest of the industry under FRAND terms.  It all seemed so reasonable that an engineer at the standards meeting could concentrate on reaching the best technical solution (his or hers, obviously…) without any thought to yucky patent stuff.

Yeah, right.  It hasn’t been nice for a while – not a surprise, as a requirement to license SEPs on FRAND terms is little more than an agreement to make SEPs Someone Else’s Problem and not an issue for the standards body concerned.  Despite a good twenty years of fractious patent disputes about SEPs and FRAND licensing absorbing vast quantities of legal effort – I’ve spent many hours on the DRAM and 802.11a patent sagas alone, and I was barely on the fringes of both – many key questions, such as how FRAND license royalties should be calculated and just what a patent proprietor is entitled to do up to the point where a licensing target becomes a paid-up licensee, have nebulous answers at best. (more…)

The Bridge Inspection Authority – the FTC and “Patent Trolls”

Troll_Bridge_by_BlazeTwoeEveryone in the intellectual property community will be aware that the debate over the activity of “patent trolls” has lasted years, and has always contained plenty of heat and not a lot of light. The heat shows no sign of diminishing, as journalists realise that there’s an easy story to file in a day trip to Tyler or Beaumont to look at a corridor of brass plated doors with no-one behind them – but there are at least some attempts to shine a light under the bridge to see what these trolls really look like. The latest of these is the recently announced proposal for a collection of information by the Federal Trade Commission (the FTC).

There has been little unanimity on what a patent troll is – except than that no definition ever covers the commercial activity of whoever is making the definition. It has even been difficult to find a neutral generic term for such behaviour. We used to use NPE (“Non Practising Entity”), to distinguish patent owners only interested in licensing from patent holders who used patents to support their own commercial activity in selling products and services. This term fell out of use when it was appreciated that one class of NPEs is long established, generally respected, and considered by most to be behaving in an acceptable way with its stock of intellectual property – such NPEs are often known as “universities”.


It’s such a shame for us to part (Poisonous Divisionals)

onion root mitosisUnusually, I’m lost for words.  Not words in general, as you can see, but specific words to describe the phenomenon of self-collision between parent and divisional applications identified in European practice by Malcolm Lawrence and Marc Wilkinson of Avidity IP as the poisonous…  I’d better stop there.  In the light of UK Trade Mark Registration No. 2612561, I think we need to find a new generic term.  “Putrid Priority” is often the real problem but as a term, this doesn’t sound like an improvement.  It would be good to make some reference to the overarching phenomenon of self-collision.  How about “divisional collision”?  Why not – let’s see by the end of the article whether it trips off the tongue well enough as we consider its application in in Nestec S.A. et al v. Dualit Limited et al.


RAND – the search for meaning reaches Seattle

electromagnetic-field-98736_640IEEE 802.11 is a set of standards that cover wireless local area networking.  These standards provide the basis for wireless network products which use the Wi-Fi brand (yes, it is a brand) – most people reading this article will use such technology many times a day.  Patents have played a contentious role in the development of this standard, particularly in the successful licensing campaign carried out by the Australian national science agency CSIRO.  This campaign has attracted strong criticism – for example in this Ars Technica article – and also some robust defence, particularly from Australia in this piece from the Patentology blog.  While clearly no-one likes to be told that they are governed by trolls, hopefully tempers have now cooled, and this is all water under the bridge.


The Hand Test Revisited

Most patent attorneys at some point in their career will have been introduced to the “Hand Test”.  This is a rule of thumb (well, four fingers and a thumb) test to determine whether a claim is useful.  There are various versions, but a familiar one is for Claim 1 of a patent to be printed out – for the sake of argument and objectivity, let’s say in 12 point Times Roman with one-and-a-half spacing – and for a patent attorney (let’s say one taking size 8 in gloves) to try to cover it with their hand laid flat, with fingers together, on the paper over the printed claim.  If there are lines of text showing above or below the hand, the claim is generally not infringed by the embodiment of interest, avoidable by one simple workaround or another, or simply impossible to infringe.


Does Every Experiment Need a Test Tube?

The UK Intellectual Property Office has recently launched a consultation entitled “The Research and Bolar Exceptions”.  While all patent practitioners may have got as far as the end of the title, the profession will split into two groups after reading the subtitle, “A formal consultation on patent infringement in clinical and field trials”, indicating that this is another exercise in sculpting patent law specifically for the pharmaceutical industry.

This all relates to the interpretation of s.60(5)(b) of the Patents Act 1977, which states that:

An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if… it is done for experimental purposes relevant to the subject-matter of the invention;”

Most European countries have a similar provision as a result of the harmonisation in European patent law associated with the creation of the Community Patent and European Patent Conventions in the 1970s.  Different countries, however, interpret this provision in quite different ways.  The UK courts have interpreted this exception narrowly, leading to widespread concern that the UK is out of step in not having a clear exception for clinical trials.