Trends in prelicensing negotiations of standard‐essential patents

• Published date: 01 July 2019
• Author: Dipesh A. Jain,Vishal Shrivastava,Indranath Gupta,Vishwas H. Devaiah
• DOI: http://doi.org/10.1111/jwip.12120
• Date: 01 July 2019

Received: 25 September 2018

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Accepted: 5 February 2019

DOI: 10.1111/jwip.12120

NOTE

Trends in prelicensing negotiations of

standard‐essential patents

Indranath Gupta

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Vishwas H. Devaiah

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Dipesh A. Jain

3

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Vishal Shrivastava

2

1

O.P. Jindal Global University, Sonipat,

Haryana, India

2

Jindal Global Law School, Sonipat, Haryana,

India

3

Bombay High Court, Mumbai, Maharashtra,

India

Correspondence

Indranath Gupta, O.P. Jindal Global

University, Sonipat Narela Road, Sonipat,

Haryana 131001, India.

Email: igupta@jgu.edu.in

Abstract

Prelicensing negotiations play a crucial role in determining the

fate of the terms that govern licensing of standard‐essential

patents (SEPs). There have been a number of judgments from

all around the globe that suggest the best practices that

parties, that is, the SEP holder and the technology implementer

should follow to safeguard their respective positions. To begi n

with, the Huawei framework and later on a number of decisions

in Germany did reflect on the framework under which an SEP

holder may ask for an injunction in matters relating to

infringement of essential patents. Similarly, these cases also

suggest the expectations bestowed upon an implementer to

ensure early completion of a negotiation process. Under similar

circumstances, the Indian courts do offer overall guidance to

the stakeholders. In the context of prelicensing negotiations

and existing best practices, this article delves into the

transition from the Huawei to the post‐Huawei framework,

investigates the unresolved issues, and further reflects upon

the existing situation in India.

KEYWORDS

anticompetitive, injunctions, prelicensing negotiations,

standard‐essential patents (SEPs)

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INTRODUCTION

Smart homes, smart cities, smart cars, and other similar electronic appliances have changed the way we engage

with products that are digitally interconnected. In this hyperconnected world, it is necessary that there is seamless

interconnectivity between products and that means better interoperability. This can only happen when patent

owners of such technologies engage with Standard‐Setting Organizations to declare such technologies as

© 2019 The Authors. The Journal of World Intellectual Property © 2019 John Wiley & Sons Ltd

J World Intellect Prop. 2019;22:120–128.120

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wileyonlinelibrary.com/journal/jwip