The importance of harmonisation and robust protection of standardised technology in India

KV Prasad Jun 13, 2022, 06:35 AM IST (Published)

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Innovation and ground-breaking technological achievements are the result of extensive and costly research & development efforts. These efforts are made, because of companies trusting that patents covering these technologies will be respected. Indeed, a robust IPR protection equals certainty and stability that encourage additional investments and foster innovation.

As Indian businesses and citizens are increasingly relying on connectivity, cellular standards (2G-5G) are gaining traction. Standardised connectivity, however, is global. Companies around the globe need to follow the same technical rules in order for their products to be interoperable and for us to be able to communicate. Thus, India, same as all other countries, require harmonisation. Against this background, this article describes the latest developments in Europe regarding standard essential patents (SEPs) and recommends India to follow the same path.

Need for efficient protection for SEPs in India

Cutting-edge cellular standards, such as 2G to 5G, are broadly implemented and disseminated thanks to the licensing of SEPs under fair, reasonable and non-discriminatory (FRAND) terms. FRAND licensing ensures adequate compensation to SEP owners for the use of their patented technology whilst providing implementers with access to the inventions. However, this only works if the balance in the FRAND ecosystem is maintained. This requires defending SEP users from SEP owners seeking terms contrary to FRAND, as well as providing adequate protection to inventors against unwilling licensees. An example of the latter is granting of injunctions for SEPs in a timely manner. This is acutely needed as not every implementer is willing to agree on a FRAND licence for the SEPs they are infringing.

The European approach

To achieve the right level of protection of SEPs, it is necessary to have efficient IPR enforcement and unrestricted access to courts. To that end, when dealing with SEP cases, Indian courts would benefit from adopting a similar approach to the one taken by courts in Europe. There, national courts analyse the behaviour of SEP owners and SEP users in the determination to grant injunctions in SEP infringement cases. Both parties, SEP owner and SEP users, are expected to negotiate in good faith. The SEP owner must notify the infringement of its patent/s to the SEP user. The implementer on the other hand must express its willingness to conclude a FRAND licence.

An implementer’s willingness is expected to be unconditional, i.e., ‘on whatever terms are in fact FRAND.’ More specifically, the implementer needs to express its willingness clearly, unambiguously and in a target-oriented manner throughout the negotiation. The SEP owner is then expected to provide a FRAND offer in writing, and the implementer is expected to respond diligently and without undue delay to the SEP owner offer. In case it considers the SEP owner’s offer not FRAND, the implementer is expected to make a FRAND counteroffer promptly and in writing and provide appropriate security should the SEP owner reject the counteroffer.

Global best practices advancing Indian economy

Indian courts would benefit by applying the European approach in handling SEP disputes. A convergence in international practices will increase certainty and predictability in licensing markets. Moreover, a focus from the courts on the negotiating behaviour of the parties would incentivize them to behave in good faith towards amicably reaching an agreement. The High Court of Delhi appears to already follow such an approach and assesses the behaviour of the parties throughout licensing negotiations (e.g., indicatively Ericsson v. Intex – I.A. No. 6735/2014 in CS(OS) No. 1045/ 2014; Ericsson v. iBall – I.A. No. 17351/2015 in CS(OS) No. 2501/2015; Telefonktiebolaget LM Ericsson (PUBL) v. Lava International LTD – I.A. Nos.5768/2015 & 16011/2015 in CS(OS) No. 764/2015). It would thus be advisable that other Indian courts adopt such an approach when handling SEP cases. This could be carried out through the continuous education of Indian judges on the comparative best practices in SEP cases and the availability of injunctions against unwilling licensees. Judges should also be made aware of the many benefits to India’s economy and technological leadership, that strong SEP protection can offer.

By Eleftheria Stefanaki, LLM and Dr Sheetal Chopra**
** Eleftheria Stefanaki LLM is a Senior IPR Researcher and Dr Sheetal Chopra is Director IPR Policy India, both at Ericsson. The views expressed herein are those of the authors’ alone and do not necessarily represent Ericsson’s views.

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KV Prasad Journo follow politics, process in Parliament and US Congress. Former Congressional APSA-Fulbright Fellow