Sunday, February 18, 2018

Japanese government publishes the draft of user’s guide for HANTEI on SEP

As mentioned before, the Japan Patent Office (JPO) is going to provide the following two measures to promote the dispute resolution on standard essential patents (SEPs).

・Guidelines on SEP licensing negations
It will cover trend of legal precedent on SEP disputes worldwide and also show elements to consider in determining reasonable royalty rate to improve predictability. It will be published next month or so.

HANTEI on SEP
It is an expansion of existing JPO’s advisory opinion service (HANTEI) to indicate whether or not a particular patent is a standard essential patent. The existing HANTEI service provides advisory opinion, which is non-binding, on whether or not a particular patent covers a particular product or service. The decision is available to the public. For more information on existing HANTEI service, please see here.

On February 16 2018, JPO published the draft of user’s guide for "HANTEI on SEP" to invite public opinion until March 11. Then, JPO will start the operation of the new service from April this year. The English translation of the user’s guide is regrettably not available at this moment. However, foreign companies also should know this service as a tool, since they may have a dispute on SEP in Japan. In fact, Apple had such a dispute with Samsung in Japan before

The requirements for "HANTEI on SEP" are as follows.

  1. Existence of dispute about standard essentiality of a patent between the parties is required.
  2. A demander is required to identify a virtual subject matter in dispute consisting only of integral components specified in a document developed by a standards body or the like.
  3. The demander is only permitted to claim that the virtual subject matter in dispute is within the technical scope of the patent, but not permitted to claim that it is out of the technical scope.  
The demander needs to make an element-by-element comparison between the patent and the virtual subject matter in dispute to prove that it is within the technical scope of the patent, while the demandee is allowed to make a counter argument. Then, when the demander successfully proves that the virtual subject matter in dispute is within the technical scope of the patent, the patent is deemed to be a standard essential patent. As described above, the virtual subject matter in dispute is identified by the demander. Therefore, it should be noted that there could be a lot of virtual subject matter in dispute which depends on how the demander identifies, and it could arrive at a different judgement.

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