Latest Consultation on Standard Essential Patent Licensing
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| Department for Science, Innovation and Technology Author bryan... Licence CC BY-SA 2.0 Source Wikimedia Commons |
"A standard essential patent ("SEP") is a patent that has to be worked in order to comply with a technical standard. Organizations that set such standards (known as standards-setting organizations or SSOs) require SEP proprietors to promise to license the use of their patents to businesses that want to make or distribute products that comply with those standards ("implementers") on fair, reasonable and non-discriminatory ("FRAND") terms as a condition for including their patents within the standards."
I added that in theory such a condition looks very fair and ought to work very well but in many cases it doesn't. That is because implementers delay paying fees until a court determines whether the SEP is valid, essential to the standard or infringed by compliance with the standard, while patentees have very different ideas from implementers on what licence fees and other terms are FRAND.
The solution of the English Patents Court has been to determine a patent's validity, essentiality and whether or not it has been infringed in proceedings known as "technical trials". If at least one patent is valid, essential and infringed, the court will injunct the implementer from working the British patent unless the implementer agrees to take a worldwide licence to work the British and corresponding foreign patents on terms that the court finds in further proceedings (often called a "FRAND trial") to be FRAND (see Jane Lambert Patents: Supreme Court upholds Court of Appeal and Sir Colin Birss on FRAND 27 Aug 2020 NIPC Law).
As Feryal Clark MP, Parliamentary Under-Secretary of State for AI and Digital Government, remarked in her foreword to a Consultation on Standard Essential Patents published on 15 July 2025, "resolving disputes can be costly and time-consuming—one recent case cost £31.5 million—driving up expenses that may ultimately be passed on to consumers." The previous government conducted an open consultation on SEPs and innovation and issued a call for views and circulated a questionnaire on standard essential patents ("SEPs") for SME small-cap and mid-cap businesses, which I discussed in IPO Consultation on SEPs and Innovation on 19 Dec 2021, and IPO Consults SMEs on SEP Licensing on 24 March 2023 respectively. One result of those consultations has been the launch of the SEPs Resource Hub, which I considered in Launch of the IPO's Standard Essential Patents (SEPs) Resource Hub on 7 Aug 2024.
The new government has developed some interesting proposals for reducing cost and delays in FRAND Litigation which it has included in the above-mentioned consultation document. One idea is establishing a "Rate Determination Track" in the Intellectual Property Enterprise Court (IPEC) to supplement the existing Small Claims Track and Multitrack as "a simpler and more efficient approach to proceedings to determine the correct licence rate." Julian Jeffs QC, who claimed to have dreamt up the idea of a Patents County Court (the precursor of IPEC), and the late Judge Peter Ford, who was that court's first judge and for whom I had considerable affection, would have loved that proposal.
Another bright idea is a pre-action protocol like the ones in para 18 of the Practice Direction - Pre-Action Conduct and Protocols. That is not an entirely new idea. Shortly after the introduction of the Civil Procedure Rules, a committee that included Mr Justice Laddie as he then was, Clive Thorne, Jonathan Rayner James QC and Michael Skrein laboured on a pre-action protocol for IP disputes. For one reason or another, their proposals were never adopted, but they have lived on to supplement the Practice Direction - Pre-Action Conduct and Protocols as a Code of Practice for Pre-action Conduct in Intellectual Property Disputes, which can be downloaded from ReedSmith's website.
Yet another suggestion is an "essentiality checking service" which might be run by the UK Intellectual Property Office, outsourced to an outside service provider or left to the market to develop further solutions as technologies emerge. The consultation documents also proposed greater use of mediation and other forms of ADR, which Lord Justice Arnold himself recommended in Nokia Technologies OY and another v Oneplus Technology (Shenzhen) Co Ltd and others [2022] EWCA Civ 947 (11 July 2022).
Further details about the consultation can be obtained from Consultation on Standard Essential Patents on the Citizen Space website or the IPO's press release, Press release Government launches SEPs Consultation to Boost UK Innovation. Responses have to be lodged by 7 Oct 2025. Anyone wishing to discuss this article may call me during office hours on +44 (0)20 7404 5252 or send me a message on my contact form.
Yet another suggestion is an "essentiality checking service" which might be run by the UK Intellectual Property Office, outsourced to an outside service provider or left to the market to develop further solutions as technologies emerge. The consultation documents also proposed greater use of mediation and other forms of ADR, which Lord Justice Arnold himself recommended in Nokia Technologies OY and another v Oneplus Technology (Shenzhen) Co Ltd and others [2022] EWCA Civ 947 (11 July 2022).
Further details about the consultation can be obtained from Consultation on Standard Essential Patents on the Citizen Space website or the IPO's press release, Press release Government launches SEPs Consultation to Boost UK Innovation. Responses have to be lodged by 7 Oct 2025. Anyone wishing to discuss this article may call me during office hours on +44 (0)20 7404 5252 or send me a message on my contact form.
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