Report of the Workshop on Basics of SEPs by Ms. Justina Mathew

Topics: Basics of Standard Essential Patents (SEPs), Preparing for placements in IP field

The workshop on Basics of SEPs: Pre-requisites of entering the field of SEP Litigation; Preparing for placements in the IP field started at 2:00 PM on 13^th February, 2021. The Moderator of the session was Ms. Sonal Sinha, who gave a short introduction about the IP Press and asked trivia questions related to IPR to keep the audience engaged by the time the Trainee, Ms. Justina Mathew was joining the session. The session kick-started with a brief introduction of Ms. Justina and the profile of work at her current role at Saikrishna and Associates.

Ms. Justina initiated the session with a PowerPoint presentation (Click here to access) on Basics of SEPs which consisted of the following:

• Importance of Patents
• Standard Essential Patents – Explained
• Difference between SEP and Ordinary Patent
• SEP Formation Process
• Licensing Rates for SEPs
• FRAND Terms
• Why Companies prefer SEPs?
• SEP Litigation

Segment 2

• How to be Placement-ready?

Here are the key takeaways from the workshop:

1. An SEP is a group of multiple patents. SEPs create a pool of patents that are necessary in order to create a standard in a technology. It is a technical common design which is adopted as a standard in order to increase market efficiency in terms of cost, time and labor. This was explained with the example of Universal Serial Bus (USB) which is an industry standard that consists of multiple patents used together. Example of 4G technology was used, which was referred to throughout the whole workshop to establish a common ground and explain various aspects of SEPs.
2. SEPs and Ordinary Patents are different from each other in many aspects, most importantly the nature of their implementation. To quote: “SEPs are patents that are unavoidable for the implementation of a standardized technology. It is impossible to manufacture standard-compliant products such as smartphones or tablets without using technologies covered by one or more SEPs. On the other hand, an ordinary patent would only be used if the product/process requires that specific invention covered by the patent.”  
3. A Standard Setting Organization (SSO) is responsible for setting, developing and maintaining standards in a particular industry and for this, they bring different patent-holders together. The functions of SSO include discussing, researching and deciding on what standards have to be adopted. Members of SSOs are Sellers, Suppliers and Manufacturers in general. Ms. Justina explained in great detail the whole process that SSOs undertake.
4. Licensing procedures of SEPs was discussed. The SEP Owners are required to submit a self-declaration that their patent is a part of the SEP and prove that it is essential. If an SEP Owner denies the patent rights then it would have far-fetched repercussions, since it would pose a hindrance in the process of standard-setting. FRAND licensing terms in relation to SEPs was also discussed.
5. The Trainee introduced the concept of SEP Litigation and discussed its scope in India. According to her, it is an emerging field that is at its very initial stages, but it has seen a rising trend in India. SEP Jurisprudence is still emerging, and is still largely dependent on international conventions, industry practices and rulings of foreign courts.
6. In the next segment of the workshop, placements and scope of work in IP field was discussed. The Trainee asserted that there is no one approach towards placements, since different things work for different people. However, she gave a few pointers on preparing an academic profile and also on managing time in law school.
   • Academics are primary, and one needs to secure a decent GPA, if not the highest. Knowledge can be acquired from classes and by pursuing different courses and internships which has to be then implemented.
   • Implementation of knowledge acquired in research paper and article publications, competitions and internships.
   • A good profile in the extra-curricular field, such as sports, music, drama, debate, etc. is also important to build an all-round profile.
   • Internships can be pursued in many different fields as possible to gain knowledge of different sectors to choose the field one desires to pursue after graduation.
   • For the penultimate and final year students, building a professional network is of prime importance. A good network gives access to more opportunities – internships, research assistant posts and jobs.

The attendees posed a variety of questions as follows:

• Can patent owners declare their patent as SEPs by themselves? If so, then how?
• Is there any codified law except precedents on SEPs in India?
• How are licensing rates fixed in case of SEPs?
• In the recent Ericsson case, it was contended that there was an NDA in place. Is such practice execution of NDA contrary to FRAND terms and amounts to dominant position?
• What are the requirements to become a patent attorney in India?

All the questions were answered and explained in great detail by the trainee, Ms. Justina Mathew. She even went a step ahead and asked an attendee to mail the question to her since it was a complex one and would require a detailed answer.

After the session, the moderator Sonal Sinha asked the Trainee Ms. Justina Mathew for any advice she would like to give to the attendees looking for internships and other opportunities. She advised that one should explore many fields as possible and look for emerging areas in IPR, such as AI, blockchain, SEPs, among others.  

Register for our upcoming workshop on ‘Protecting your brand in the midst of a pandemic’ by Speaker Ms. Aashrika Ahuja, Associate Partner at Knowledgentia Consultants, India which will be held on February 26, 2021 from 2:00 to 3:00 PM. Click here to register.