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Standardization and intellectual property rights are key contributors to industrial innovation and industrial competitiveness. While standards ensure rapid diffusion of technologies and interoperability between products, patents provide incentives for research and development and facilitate knowledge transfers. Many standards comprise innovative technologies that are protected by patents. Public authorities and the standardization community have developed rules and practices to ensure the efficient licensing of such standard-related patents. These rules and practices aim to give patent holders a fair return on investment in research and development and to allow all users of the standard fair access at reasonable cost.

On 25 March 2014, a comprehensive study titled “Patents and Standards: A modern framework for IPR-based standardization” was published by a policy consortium known as ECSIP, working for the DG Enterprise and Industry of the EU Commission. Over the past decade, the relationship between standards and patents has become a subject of lively public debate, particularly in the field of information and communications technologies (ICT). Where possible standards comprising patent-protected technologies are under discussion, it becomes necessary to address matters of disclosure and, subsequently, licensing, acknowledging the rise, in recent years, of commitments to license on fair, reasonable and non-discriminatory terms.

Most of the measures suggested in the ECSIP study are aimed at improving transparency in the post-grant phase and therefore lie beyond the immediate concerns of the EPO. However, one of the proposals is directly relevant to patent offices. If a new technology not subject to a secrecy obligation is disclosed during the development of a standard, it automatically counts as prior art and must be taken into account when examining patent applications. The main problem here for patent offices is to obtain access to the documentation of the standard at the earliest possible stage.

The EPO has been aware of this issue for some time, and has established relations with the major standard-setting organisations at European and world levels. EPO databases today contain some 1.6 million documents relating to standards. Only a few hundred of these documents were cited in EPO search reports in 2004, but the number has risen steadily, to a total of over 14 000 last year. In some fields, 35% of the prior art citations refer to standards. Between 2012 and 2013 alone, the number of standard- related citations increased by 19%. Patent examiners need special training to search this particular stock of documentation, but the investment is well worthwhile. The improvement in searching greatly enhances the quality of the granted patents, which in turn can help to save litigation costs in highly competitive fields of technology.

With the steady encroachment of ICTs into all areas of life, the comprehensive integration of standard documentation in the searchable prior art will become an ever-more challenging task for the EPO. The Office is firmly committed to devote the necessary resources to this priority area and to ensure the best possible synergy with standards organisations.

Source: European Commision and EPO