Brief Analysis on Standard Essential Patent (SEP)

Author:ZHAO Biyang | UpdateTime:2016-05-11 | Hits:

In recent years, the enforcement of SEP has drawn much attention in China due to the anti-monopoly cases about Qualcomm and IDC. With the progress of these cases, people’s attitudes on the SEP and the patentee of SEP are varying.

Initially, many people considered that SEP was a powerful weapon for protecting the rights of patentee, and then, they gradually realized that during the enforcement of SEP, patentees occupy the advantageous position, and might conduct the monopoly actions to coerce the opponent in the licensing negotiation or lawsuit by using the natures of SEP. With the deepening of such impression, the court and the government begin to regulate the enforcement of SEP. As in the anti-monopoly cases about Qualcomm and IDC, the court and the government in China conducted the anti-monopoly examination. 

More and more patentees found that the enforcement of SEP must follow the RAND or FRAND principle for avoiding the risk of anti-monopoly, which means that it might be necessary for patentees to conduct the licensing negotiation before suing the opponent. Moreover, for some SEPs, it might be difficult for patentees to obtain the injunction from the court. Some opponents reversely coerce the patentees for reducing licensing conditions by utilizing these requirements on the enforcement of SEP. In the environment of strengthening the IP protection, the attention is also being paid to these factors which are disadvantageous to the patentees.

In this situation, a recent SEP related lawsuit is noteworthy. In this case, Xi’an IWNCOMM who is the patentee of the SEP for a compulsory national standard (i.e. WAPI (Wireless LAN Authentication and Privacy Infrastructure) standard) filed the patent infringement lawsuit against Sony Mobile Communications (China) in 2015. The court hearing of this case was held in Beijing Intellectual Property Court in February, 2016.  One issue of this case is that the Interpretation II on Several Issues Concerning Application of Laws to Trial of Patent Infringement Disputes issued by Supreme Court On April 1, 2016 provides regulations on only some specific situations about the enforcement of SEP of the recommended national, industry or local standard are regulated, and keep silent on many other aspects, e.g. the SEP of a compulsory national standard, and the judgment of Xi’an IWNCOMM vs. Sony may provide the further guide on this aspect.