Licensing Standard Essential Patents and Protecting IP Rights

Licensing SEPs differs from traditional patent licensing; SEP licensors typically must offer non-exclusive licenses on fair, reasonable and non-discriminatory (FRAND) terms. The meaning of the FRAND obligation is far from settled. Counsel to SEP licensees and licensors must navigate legal rights and duties that materially affect the terms and conditions of SEP licenses.

Counsel to licensors considering participation in SSOs should be mindful of SSO constraints, including limitations on license terms and disclosure policies that could require a company to reveal technology before securing patent rights. SSOs raise unique challenges that companies and their counsel must overcome to protect their patent rights.

Listen as our authoritative panel of patent attorneys examines the challenges of SEP licensing and SSO disclosure requirements. The panel will offer best practices for navigating these challenges and protecting patent rights.

1. Impact of Unwired Planet on licensing and enforcing SEPs
   1. UK High Court decision vs. US Law
   2. Impact on choice of where and how SEP patents are enforced and licensed
   3. Reasonable royalty and license scope under UK/EU law v. US law
   4. How to deal with SEPs on worldwide basis
2. Injunctions and SEPs
   1. Injunctions against SEP owners who do not negotiate in good faith
   2. Injunctions against SEP users who do not negotiate in good faith
   3. What is good faith negotiation
   4. What are required/reasonable/impermissible terms
3. Disclosure and licensing requirements
   1. Understanding individual policies of particular SSO
   2. Evaluating if/when to meet disclosure and licensing requirements
   3. Remedies
   4. Antitrust/Unfair competition liability

The panel will review these and other key issues:

• What constraints are placed on a licensor that participates in an SSO?
• What factors should patent holders consider when determining if and when to meet an SSO’s disclosure requirements?
• Is an SEP holder required to license its IP on a FRAND basis, and if so, how are its enforcement rights limited?