Home Insights Insights from the 21st FICPI Open Forum: SEP and FRAND negotiations, Unified Patent Court & more

Insights from the 21st FICPI Open Forum: SEP and FRAND negotiations, Unified Patent Court & more

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2  minute read
Date published
11 October 2023

Griffith Hack principal Christian Schieber recently attended the 21st FICPI Open Forum in London, joining over 400 colleagues from the international IP attorney community to discuss IP practice-related issues and topics of IP law.

Following four days of seminars, meetings and networking events, Christian has compiled three of his key highlights from this year’s event.

SEP and FRAND negotiations

The discussion around Standard Essential Patents (SEPs) and Fair, Reasonable, And Non-Discriminatory (FRAND) challenges was enlightening, with the panel providing interesting perspectives on the challenges that arise in SEP/FRAND negotiations.

The panellists tossed up pros and cons of various possible approaches in finding a balance between owners of SEPs and implementers, in particular with the expansion of FRAND outside traditional telecoms field into the IoT across many industries.

It was a pleasure to personally get to meet panelist Lord Justice Colin Birss (UK), Lord Justice of Appeal, The Royal Courts of Justice after the session and discuss these topics in more detail.

Christian Schieber posing a question to the SEP/FRAND panel.
Photo courtesy of FICPI.

Unified Patent Court

Having only recently opened its doors for business, the Unified Patent Court (UPC) will decide questions of both patent validity and infringement for the new European Patent with Unitary Effect (EPUEs) and traditional European Patents which are not ‘opted-out’ from the UPC.

Already 56 cases have been filed as of 11 September 2023 (7 revocation and 37 infringement) at the various central, regional and local (designated) UPCs, with the German designated UPCs in Munich, Mannheim, Dusseldorf and Hamburg handling around 2/3 of all matters. This includes preliminary measures such as preserving of evidence, orders for inspection and similar pre-trial motions.

Dr Silvia Dondi, Partner at the Italian firm Bugnion SpA, presented her firm’s UP Checklist, which was developed to assist clients determine whether the new system ought to be used or not, and a UPC Checklist for assisting in deciding whether specific granted patents should be stayed-in or opted out of the UP regime.

Conclusion: As is the case with IP management, there is no ‘one size fits all’ solution or recommendation.

In-person collaboration remains key

It was great to personally reacquaint with colleagues in the international FICPI fraternity, meet old friends and see many new (and younger!) faces in the post-COVID conference world. Many conversations were had on the sidelines and during the breaks between sessions.

One common theme emerged from these: despite ‘modern’ telecoms technology having enabled practitioners to meet virtually during the pandemic using Zoom, Teams and various other proprietary vid-conf apps, personal interactions and discussions at FICPI-sponsored and other conferences, remain an integral and valuable part in maintaining and establishing new professional relationships around the globe.

Christian would like to thank the team from FICPI for hosting an outstanding event, and all the presenters and guest speakers who provided their insights.

Photo courtesy of FICPI