Page 16 - A&A Patents&Design Rewind-2016

A THEORETICAL DEBATE: DIPP RELEASES A

DISCUSSION PAPER ON SEPS
Telecom wars have picked up a lot of
agitation especially in the wake of suits paper floats ideas by which it can be ensured that
filed by telecom innovators and Standard Standard setting remains beneficial and the Patent
Holder is incapable of unjustly exploiting his rights

Essential Patent (SEP) holders. Consequently, the and the Standard Setting/ This discussion paper stipulates
Department of Industrial Policy and Promotion Developing Organizations, that “An Essential Patent or
(DIPP) released a discussion paper on SEPs with a in addition to their core Standard Essential Patent is a
view to invite opinions, comments and suggestions functions, are also able patent that claims an invention
from the public to eventually formulate and to ensure that the patent

establish a set framework to define the obligations hold up remains as low as that must be used to comply with

of SEP holders and their licensees. possible and the standards a standard. Standards frequently

This discussion paper stipulates that “An Essential are easy to adhere to. make reference to technologies
Patent or Standard Essential Patent is a patent that The paper also discusses that are protected by patents. A
claims an invention that must be used to comply with and evaluates policy which patent that protects technology
a standard. Standards frequently make reference may be necessary in that is essential to comply with
to technologies that are protected by patents. A determining the obligations a standard is called a Standard
patent that protects technology that is essential to of an Indian SSO by Essential Patent”
referencing The European

comply with a standard is called a Standard Essential T e l e c o m m u n i c a t i o n s

Patent”. Standards Institutes (ETSI) and The Institute of

Electrical and Electronics Engineers (IEEE) Standards

The discussion Paper lays emphasis on the

compulsory licensing of SEPs to companies that The paper seeks to explain Cross-licensing and

wish to comply with standards on Fair, Reasonable Patent Pooling, the interface between the two and

and Non-Discriminatory Terms (FRANDs). These the challenges faced in adhering to the FRAND terms

terms seek to balance the rights of the Patent in such agreements. The difficulties in determining

holder and the rest of the market insofar as it seeks the values of different patents and the balance in

to limit the powers exercised by the Patent holder the royalties paid or not paid in such agreements is

by virtue of being at a dominant position and also extremely complicated and strenuous to ascertain.

ensure that the Patent holder benefits from the use It questions the necessity to have an SSO and to

of patented technology. stipulate its functions and duties by studying the

World Intellectual Property Organization mandate

With a view to bring a revolutionary change in the and the judicial approach of various other countries

SEP regime of the country the Discussion Paper in the matter.

introduces Standards, SEPs, Patent Hold-ups and

FRAND terms. The paper specially talks about why Further, the paper discusses the workings and

FRAND terms are important and necessary with a functions of major SSOs in the telecom sector in

view to bridging the gap between the law makers and India, like The Telecom Standards Development

the layman beginning with the Role of SEPs in India’s Society of India, Telecommunications Engineering

IPR regime and its effects on India’s anti-competitive Centre, Bureau of Indian Standards etc.. In addition

laws. Since the Standard Setting Organizations to the above the paper discusses the approach of

(SSOs) imposes predefined parameters on certain the Indian Judiciary in such matters by considering

goods and services, various competitors agree cases like Micromax Informatix Ltd v LM Ericsson,

to negotiate on and set certain Standards which IntexTech v LM Ericsson and Best IT World India

may in turn affect India’s Anti-trust laws. The Pvt Ltd v LM Ericsson.

16 | Patents & Design