Responses to the Questionnaire for SME, Small-Cap and Mid-Cap Businesses

European Patent Office

Author Kārlis Dambrāns Licence CC BY-SA 2.0 Source Wikimedia Commons

 

Jane Lambert

In IPO Consultation on SEPs and Innovation, I mentioned the Intellectual Property Office's open consultation on SEPs and innovation and issued a call for views on 19 Dec 2021. The responses to that consultation appear in Standard Essential Patents and Innovation: Summary of Responses to the Call for Views which was updated on 5# July 2023.  

On 21 March 2023, the IPO published a questionnaire on standard essential patents ("SEPs") for SME small-cap and mid-cap businesses. which I discussed in IPO Consults on SEP Licensing on 24 March 2023.  The IPO received 47 responses to that questionnaire including one from me.  It published the outcome of the consultation on 5 July 2023 (see SEPs questionnaire for SME, small-cap and mid-cap businesses: Summary of Response).  It intends to consider the responses as part of its policy development and present its overall findings to Ministers later this year.  It invites anyone who wishes to contact the IPO concerning these matters to continue to use the dedicated mailbox at SEPcallforviews@ipo.gov.uk.

Of the 47 responses, 7 were disregarded for one reason or another.   The following is a profile of the respondents of the 40 that remained:

Question 1 - What is your position within your company?

 Over two-thirds of the responses came from businesses employing 9 persons or less, A further 2 came from businesses employing 10 or more but less than 50 and 5 from businesses employing 50 but or more but less than 250,   Only 6 responses came from businesses with 250 or more employees.   The industries that were represented were as follows:

Question 6 - In which industry does your business operate?

I found the most interesting parts of the summary to be the responses to the following questions:

• "Do you have sufficient information on pricing of SEPs that you license or may license in future?" 83% of the respondents said "no" and the rest "don't know".  Nobody said "yes".  
• "Do you believe you were offered a licence on FRAND (Fair, Reasonable And Non Discriminatory) terms?"  83% said "no" and only one said "yes".  There was one "don't know." 
• "Have you disagreed with the terms of a licence or the rate that has been offered to you for a licence?" Here the overwhelming majority said "yes", one "no" and the rest preferred not to say.
• Rather worrying is that 66$ of the disputes remain unresolved.  Of the 9 disputes that were resolved 6 were resolved directly with the licensor and 6 involved litigation.  None involved ADR. 
• In response to the question "Is there sufficient information on whether the patent you are licensing is essential to the technical standard you rely on?" 7 of the 9 said "no", 2 "don't know" and none said "yes".
• All 9 were concerned at the threat of a court-imposed injunction but none seemed to have removed s product from the market.

Also interesting were respondents' suggestions for improving the situation.   

I shall discuss this questionnaire and responses in my talk on FRAND at the Cambridge IP Law Summer School next month and in my subsequent talks in Chambers and Birmingham which I mentioned in Patent Law Update on 4 July 2023.  If you want to attend any of those talks call Ellie Barra on +44 (0)20 7404 5252 during UK office hours or send me a message  through my contact page,