The Internet of Things: Patents and Standards
How to deal with hostile SEP licensing requests
- Why licensing requests re-standard-essential patents (SEPs) are different
- Worldwide strategy considerations; How to protect against injunctions?
- Who needs to take action: OEM or telecommunication-unit supplier?
- FRAND: calculation of fees & drafting of licence agreements
- Dealing with non-practicing entities ('trolls')
- Case study on a typical licensing request
Aims and objectivesObtaining patent notices for standardessential patents (SEPs) and negotiating patent licences that have to be 'fair, reasonable and nondiscriminatory' (FRAND) are already an integral part of the daily operations of companies in the telecommunications industry. Such activities are now also becoming increasingly common in companies in other industries, which now deal with SEPs within the scope of the Internet of Things. They receive patent notices for hostile licence requestsor are even sued. This practical seminar will teach participants how the recipient of a licencing request should act in order to avoid an injunction. The speakers show how patent royalty rates are assessed to be considered FRAND and how offers and contracts relating to the licencing of SEPs can be drafted.
- Why SEPs are different
- Rules of the ECJ's Huawei vs ZTE decision
- How the national courts in Europe deal with Huawei/ZTE
- How to respond to a patent infringement notification
- Who is responsible: the OEM / end-product manufacturer or the communication-unit supplier?
- How to respond to a licensing offer
- How quickly do you need to react?
- When and how you need to place a security/bond?
- Assessment methods: absolute value, numerical proportionality and incremental value
- Consider royalty stacking and comparative rates
- How you get knowledge about third party licenses
- Amount of damages for past actions
Jochen Meyer is a German and European patent attorney. He has been Head of the Patent Department of Vodafone GmbH since 2005 and has consequently already dealt with many FRAND requests. Jochen previously worked in Ericsson's Patent Department. He graduated in electrical engineering.
Dr Martin Fähndrich conducts patent infringement lawsuits at all German patent litigation courts (including Düsseldorf, Mannheim and Munich), patent nullity proceedings at the Federal Patent Court and opposition proceedings before the European Patent Office. Martin has litigated SEPs and FRAND objections in numerous proceedings. He represented one of the parties in the Huawei vs ZTE case before the European Court of Justice, where the current legal standard for FRAND defence against patent attacks was developed. He also has an excellent track record in negotiating and drafting licencing agreements, the law on employees' inventions and the patent part of M&As.
NL 1054 ES Amsterdam
Phone: +31 20 685 1351
A central element of this seminar is a case study with an actual licence request. This enables participants to gain practical experience of what they need to do the next time a FRAND licence request lands on their desks.
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