Wednesday, July 25, 2018

Some More New Papers on SEPs

1.  Pauline Debré and Simon Corbineau-Picci have published a paper titled Brevets essentiels: «FRAND-ez-vous en terre inconnue» ("Essential Patents:  FRANDezvous in an unknown land"; the title is a pun on the name of a French reality tv show) in the April 2018 issue of Propriété Industrielle (pp. 12-18).  Here is the abstract (my translation from the French):
The development of the Internet of Things and the increasing importance of standardization call for greater judicial and economic productivity of licenses in the domain of essential patents and of the rules that apply to them.  Even if recent case law provides some useful considerations for determining royalty rates and the availability of injunctions, several questions remain.
2.   Vikas Kathuria and Jessica C. Lai have published an article titled Royalty Rates and Non-Disclosure Agreements in SEP Licensing:  Implications for Competition Law, 40 EIPR 357 (2018).  
Here is the abstract:Requiring a non-disclosure agreement (NDA) is a common business practice used to safeguard the commercial interests of a licensor and a licensee in intellectual property licensing matters. The recent litigation involving standard essential patents (SEPs) has, however, raised doubts over the practice of patentees requiring NDAs before licensing SEPs to putative licensees. It has been argued that the inclusion of royalty rates in NDAs leads to discriminatory pricing of technology—a violation of the commitment to license under fair, reasonable and non-discriminatory (FRAND) terms. That is, licensees cannot know if they receive non-discriminatory terms, if they cannot compare their licences owing to NDAs. This article examines this issue from both the theoretical and practical perspectives, and concludes that the inclusion of royalty rates in NDAs may be justified in view of the technological and commercial realities involved in SEP licensing. 
3. Sophia Oliveira Pais has posted a paper on ssrn titled The Huawei Case and Its Aftermath: A New Test for a New Type of Abuse, Yearbook of Antitrust and Regulatory Studies (YARS), Vol. 2017, 10(16).  Here is a link to the paper, and here is the abstract:
Competition law sets limits on the exercise of intellectual property rights by dominant companies, namely in cases involving standard essential patents (SEPs). This article will examine the framework for SEP owners’ right to seek an injunction, discussing competitive problems that such situations may cause as well as the solutions adopted by the European Institutions, comparing them with the US and Japanese approach, and finally reflecting upon the opportunity for a new test for a new type of abuse. Although the three legal orders – US, EU and Japan – apply different laws establishing a general presumption against injunctions in SEPs encumbered with FRAND commitments, their goal is the same: to protect the interest of the SEP holder to obtain a remuneration without an abusive recourse to injunctions. I will argue that, in the EU, the Huawei case created a new test for a new type of abuse, improving the comprehensibility and certainty for the companies involved in standardization across Europe and allowing the harmonization of national judicial solutions regarding the seeking of injunctions in the SEPs context. In spite of some uncertainties, the new test clarifies the role that competition rules should play in cases of abuses by SEPs owners.

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