How can you use a product protected by an “essential patent”?
The aim of product standardisation is to guarantee the compatibility and inter-operability of different products. To achieve this, the standards for a given technology are defined by listing the mandatory technical specifications taking into account the associated standards. Standards are changing to adapt to the profusion of new technological innovations, and to help spur them on and spread them as far as possible.
These standards are generally developed and published by standardisation authorities. The largest industrial groups on the market are members of standardisation organizations and come together to form committees. The ETSI (European Telecommunications Standards Institute), the IEEE (Institute of Electrical and Electronics Engineers), the 3GPP (3rd Generation Partnership Project), the Bluetooth SIG Group (Bluetooth Special Interest Group) and the ITU (International Telecommunication Union) are among the groups which set the standards for the telecommunications industry. These include the standards for GSM, Wi-Fi, 3 to 5G, Bluetooth, etc.
In this way, industrial groups can propose new technical specifications, which are generally protected by patents. However, when an industrial group becomes a member of a standardisation authority, this usually involves a contractual obligation for the group. They must declare all of their intellectual property, including their technical specifications.
A patent is considered “essential” if it is impossible to operate a product which is compliant with its associated standard without penetrating the scope of the patent. The patent is therefore essential for this standard.
To guarantee full adherence to the intellectual property rights held by the patent owners and to the principles of free competition, these patent holders are expected to issue FRAND licenses: licenses which are Fair, Reasonable and Non-Discriminatory.
The standardisation authority is also authorised to decide upon any sanctions to take against any industrial group member who fails to meet their obligations. They can, for example, decide to exclude them from their organisation and revoke their involvement in working committees.
The legal framework for these essential patents is therefore more complex and, in particular, varies according to the standardisation authorities. The disputes concerning these patents are particularly strategic affairs and are also governed by specific jurisprudence. This sets certain additional conditions: for example, stating that prosecution of copyright infringement on an essential patent against a third party using a standard without a license is not considered abuse of a dominant market position.
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