Declaration of standard essential patents

A standard-essential patent declaration is the act by which a patent holder informs a standardisation body that it holds a patent or patent application likely to be essential to a standard under development or adopted, and undertakes to grant licences on fair, reasonable and non-discriminatory terms. BeforeETSI, which develops telecommunications standards, the essential patent declaration is governed by the intellectual property rights policy annexed to the institute’s rules of procedure.

The content of the essential patent declaration

First, the disclosure obligation: ETSI members must inform the institute in a timely manner of the essential intellectual property rights of which they are aware, in particular when they propose a technical contribution. Next, the licensing undertaking: the holder declares whether it is prepared to grant irrevocable licences on FRAND terms. Failing this, the body may look for an alternative technical solution. Finally, registration: the declaration is published in the ETSI database, which lists declared patents standard by standard. The documents are available on the website ofETSI.

The legal scope of the declaration

The declaration is not an acknowledgement ofessentiality : the body verifies neither the validity of the patent nor whether it is actually essential. Holders declare broadly, out of caution, which leads to well-documented over-declaration. On the other hand, the FRAND undertaking accompanying the declaration produces legal effects. The Court of Justice of the European Union saw it as the source of legitimate expectations of third parties, and the French courts analyse it as a stipulation for the benefit of a third party under French law, the ETSI policy being governed by that law. The holder can therefore no longer refuse a licence or demand discriminatory terms.

Key points

In practice, the essential patent declaration is the starting point of any FRAND dispute: it founds the obligation to negotiate in good faith, conditions access to injunctions and serves as a reference for assessing the weight of a portfolio. Its wording, date and scope are closely examined in litigation. The firm handles these issues, as presented on the pages FRAND and standard essential patents counsel and the FRAND undertaking.