1.
On possible cooperation between patent
offices, competition authorities and
SSOs
Theon van Dijk
The views expressed are personal and do not necessarily reflect those of the EPO
OECD Competition Committee Hearing on Standard Setting
Paris, 17 December 2014

2.
Five areas of possible cooperation
1. Provide patent expertise on competition cases;
2. Provide assistance in use of public patent databases;
3. Provide patent expert advice to consultations on new competition
regulations;
4. Use standards-related documentation to assess prior art; and
5. Explore possibilities to provide technical assistance in assessing
essential nature of certain patents for standards.
2

3.
Patent expertise on competition cases
Example: Secondment of EPO patent examiner to DG Competition’s
Pharmaceutical Inquiry (2008-2009)
•Patent examiner from EPO’s Pure and Applied Organic Chemistry Joint
Cluster was seconded for 7 months to DG Competition’s team
– Provided assistance in the analysis of (see sections 3.2. and 3.3. of the
executive summary of the final pharma report of 8 July 2009):
 patent filing and litigating strategies by originator companies (“patent
clusters”)
 delays to generic market entry
•Patenting analysis could be useful for competitive assessments in other
patent-intensive sectors as well
3

4.
Assistance in use of public patent databases
• Selection of EPO’s public patent databases:
– PATSTAT: The EPO worldwide patent statistical database for analysing and
visualising patent data. It is designed to be used for statistical research and
requires the data to be loaded in the customer's own database.
– EP-A & EP-B: all data available in the EP applications and granted patents as
published.
• Free online search tools available at the EPO website: e.g. EPAB
(European patent applications and granted patents); IP score (valuation of
patents)
• Expertise EPO Vienna team
• Potential relevance for competition cases: can contribute to the assessment
of size, structure and strength of patent portfolio of companies
4

5.
Patent expert advice on new competition regulations
• Examples of recent DG Competition regulations/guidance in which
patents play a role:
– Technology transfer block exemption regulation (Commission Regulation No 316/2014)
– Horizontal research and development agreements block exemption regulation
(Commission Regulation No 1217/2010)
– Vertical agreements block exemption regulation (Commission Regulation No 330/2010)
– Guidance on the Commission's enforcement priorities in applying Article 82 of the EC
Treaty to abusive exclusionary conduct by dominant undertakings (2009)
• Patent expert advice could add value/context, in particular regarding
dynamic efficiency
– Guiding principle: no reduction of competition in competing technologies and no
“inflation” of value of a specific technology
5

6.
Standards-related documentation to assess prior art
• Grey zone between publicly available (prior art) and not publicly
available (secret/confidential) information
– “Normal” standards development process is considered “non-confidential” in
Europe
– Disclosure of technology in standards development process is therefore
(normally) considered “public” and therefore prior art
– Use of non-disclosure agreements is rare
 EPO has clarified this grey zone through agreements with numerous
SSOs
• EPO has incorporated over 1.6 million standards-related documents
into its databases, searchable by examiners
– prevents granting of patents for technology already disclosed in the
standards development process
 decreases the risk of invalid patents
6

7.
0
2000
4000
6000
8000
10000
12000
14000
16000
2004 2005 2006 2007 2008 2009 2010 2011 2012 2013
Standards documents cited by the EPO as prior art
Standards documents increasing in importance
7

8.
Assessing essential nature of patents for standards
• Competition concern:
– Risk of “hold-up” of competitors by the owner of a standard-essential patent
(SEP)
– Potential exclusionary abuse of a dominant position under Art 102 TFEU
• IPR policies of SSOs to address the “hold-up” risk:
– Requirement for patent owners to disclose SEPs in a timely manner
– Commitment by SEP owners to FRAND license terms
• Assessment of technical essentiality of patents might be helpful:
– Essentiality may have been wrongly claimed
– Essentiality may change over time
– Essentiality of certain elements of patents may be disputed
8