Project title: Declaration of Standard-essential Patents (SEPs) – Strategic use of IP policies of standard-setting organisations by patent holders
Researcher: Vicente Zafrilla
Vicente Zafrilla holds a double degree on Law and Business Administration (E-3 Program, 2011) from Universidad Pontificia de Comillas-ICADE and LLM on Intellectual Property (Magíster Lucentinus, Universidad de Alicante 2013)
Before enrolling the EIPIN Innovation Network, he worked as IP expert for Universidad de Alicante in diverse international projects; participating in policy monitoring activities, institutional strengthening initiatives and IP strategies’ design in Latin America in the framework of EU funded projects, as well as delivering training and lectures on IP in Latin America, Asia, Africa and Europe.
He also has experience as a practising lawyer in the fields of IP, new technologies, data protection and litigation for more than three years, half of them on a top Spanish law firm.
Vicente is part of the regular team from the Spanish IP blog lvcentinvs.es.
Host Institution: Universität Augsburg; Degree Partner: University of Alicante
Strategic use of standard-essential patents (SEPs) has become a major topic of debate at the interface between IP and competition law. Thereby, two cases are discussed in particular: (1) patent ambush cases, where members of standard-setting organisations (SSOs) do not provide appropriate information about their patent policies before the standard is set in order to claim excessive royalty rates later; and (2) FRAND cases, where holders of SEPs notify their SEPs to SSOs and enter into a FRAND commitment, but later try to charge excessive royalty rates by relying on injunctive relief. This thesis is designed to address a third case: SSOs usually refrain from examining whether a given patent is indeed standard-essential, which is indeed a technologically difficult question. This may well enable firms to misrepresent patents as standard-essential, leading to an over-declaration of SEPs and, thereby, wrongly signalling to users that they will need a licence in order to implement the standard. The thesis should explore whether and in what ways the IP rules of SSOs could be adjusted in order to respond to this problem. A second question relates to the role of competition law in this regard. Do wrongful declarations of SEPs violate competition law? Can competition law be used against SSOs to oblige them to draft their IP policies in a way that excludes or reduces such strategic use?
Clear indications on how SSOs themselves can address problems linked to SEPs and how different parts of the law – patent and competition law in particular – could be used for that purpose, thereby improving implementation of technological standards and access to the standards by other firms.