USPTO and WIPO to Pool Resources for Standards-Essential Patent Disputes

The US Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO) have announced that they will collaborate to improve efficiency in resolving disputes related to standard-essential patents (SEPs). As the USPTO explains,

Standard essential patents, or SEPs, are patents that have been declared essential to a given technical standard. As part of the standards-setting process, patent owners may agree to license SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. Standards touch all aspects of modern life and include video compression, wireless communication technologies, computer connection standards, automotive technology, and more.

Battles over SEPs have gone global, with courts fighting over which ones have the rights to resolve these disputes. A recent working paper written by Igor Nikolic, Research Fellow at the Florence School of Regulation - Communications and Media notes that

The global litigation of standard essential patents (SEP) is taking a new turn with the jurisdictional battle between national courts. Some courts have started issuing anti-suit injunctions (ASI) to prohibit parallel litigation and consolidate the dispute at a single venue, while others have retaliated with anti-anti-suit injunctions (AASI), barring parties from seeking or enforcing foreign ASIs. The anti-suit injunction saga benefits no one: the parties in SEP licensing disputes are faced with legal uncertainty as to which court will hear their case; it incentivizes a race to the court to secure the most favorable jurisdiction instead of focusing on licensing negotiations; it increases litigation costs of having to pursue multiple ASIs and AASIs; and parties face fines and imprisonment of officials for non-compliance.

As ManagingIP reports,

In the second half of 2020, a couple of rulings on standard essential patent (SEP) cases were issued in China, including anti-suit injunction rulings in Huawei v Conversant, Xiaomi v IDC, and Samsung v Ericsson, and jurisdiction opposition rulings in ZTE v Conversant and OPPO v Sharp. All of the parties involved in the cases are active players in the telecommunication SEP field. Such a SEP ruling boom emphasizes the growing importance of China as a SEP litigation venue.

By agreeing to resolve their disputes via alternative dispute resolution (ADR) rather than litigation, parties to SEP-related licenses and other agreements may be able to avoid the expense, delay, and uncertainty of litigation. Under the terms of their agreement, the USPTO and WIPO will:

• Cooperate on activities that will lend efficiency and effectiveness to the resolution of disputed standard essential patent matters by leveraging existing WIPO Arbitration and Mediation Center and USPTO resources, and
• Engage in stakeholder outreach to raise awareness of the services provided by the WIPO Arbitration and Mediation Center through joint USPTO-WIPO programs.

The WIPO Arbitration and Mediation Center offers

alternative dispute resolution (ADR) options, such as mediation, arbitration, expedited arbitration, and expert determination to enable private parties to settle their domestic or cross-border commercial disputes. The WIPO Center is international and specialized in IP and technology disputes. The WIPO Center is also the global leader in the provision of domain name dispute resolution services under the WIPO-designed UDRP.

Parties that want to use WIPO services to resolve disputes can include a WIPO ADR clause in their contracts. The WIPO site offers an automatic Clause Generator and versions of the clauses are available in Arabic, Chinese, French, German, Greek, Italian, Japanese, Korean, Polish, Portuguese, Russian and Spanish.