For decades practitioners have been predicting that, with the rise of standard-essential technologies such as Wifi and 3G, it was only a matter of time before the compulsory licence provisions of the Patent Act and Part IV of the CCA would be invoked against a rights holder refusing to licence its standard-essential patents (SEPs) to its competitors.
Australian Courts were due to consider this issue for the first time in the recently settled Apple and Samsung litigation.
In the meantime, European Competition Commission has been pro-actively prosecuting right-holders, such as Motorola, refusing to licence SEPs to competitors on fair and reasonable terms (see here). Australian and US regulators by contrast have adopted a more circumspect approach, preferring to defer to the policies set by standard-setting organisations (SSOs) to resolve licensing disputes.
A recent example is the US Department of Justice’s endorsement of the IEEE’s revisions to its patent policy (see here). This revised policy provides a framework for declaring SEPs and providing compensation to rights-holders.
While it remains inevitable that this issue will arise again in Australian Courts, rights holders, in the meantime, should carefully consider the relevant SSO’s policies as a starting point for declaring SEPs and determining royalty rates.