The World Intellectual Property Organization (WIPO) and the United States Patent and Trademark Office (USPTO) have decided to collaborate in order to make it more straightforward to resolve disputes involving standard essential patents.
Patents that have been designated as being necessary to a certain technological standard are known as standard essential patents or SEPs. Patent owners may consent to license SEPs on FRAND (fair, reasonable, and nondiscriminatory) terms as part of the standards-setting process. Video compression, wireless communication technologies, computer connection standards, automotive technology, and other areas of modern life are all impacted by standards.
USPTO-WIPO agreement on the resolution of SEP disputes
“International standards, and the role of patents that are essential to them, play an important role in promoting a strong national and global economy,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “The USPTO is grateful that Director General Tang recognized the USPTO’s leadership role in advancing discussions on standard essential patent policies. Our work with WIPO underscores the USPTO’s view that SEP policy is an international issue of international importance. This agreement will leverage existing resources at both the USPTO and WIPO, supporting options to enhance the efficiency of licensing of standard essential patents, and promote resolution of disputes related to those standards.”
The memorandum of cooperation was signed this week during a meeting between Director Vidal and WIPO Director General Daren Tang in Geneva, Switzerland, which was held in conjunction with the organization’s General Assembly.
As specified in the agreement, the USPTO and WIPO will:
- Collaborate together on initiatives that will make the WIPO Arbitration and Mediation Center and the USPTO’s current resources more efficient and effective in resolving disputed standard-essential patent issues, and
- Engage in stakeholder outreach to inform the public about the WIPO Arbitration and Mediation Center’s services through joint USPTO-WIPO initiatives.
After being signed, the agreement will remain in effect for five years.
“We appreciate all the work Director General Tang and WIPO have done in this critical area. We look forward to a successful collaboration and engaging stakeholders to ensure we shape dispute resolution that will facilitate participation and implementation of standards by all innovators including small to medium-sized enterprises,” remarked Director Vidal.
“Alternative Dispute Resolution (ADR) has time and again demonstrated its value in the efficient and timely resolution of commercial disputes. In the last few years, the WIPO Arbitration and Mediation Center has been facilitating the resolution of SEP-related disputes and the new collaboration with the USPTO is an exciting development which will contribute to improving the efficiency of standard implementation,” noted Director General Tang.
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