Report on the Global Workshop on Standard Essential Patents (SEPs)

2024/04/02

On March 18, the Keio University Global Research Institute (KGRI) co-hosted the "Global Workshop on Standard Essential Patents (SEPs)" with the SEP (Standard Essential Patents) Study Group, which is celebrating its 11th year. The event welcomed experts on SEPs from Japan and abroad. The workshop brought together a diverse range of participants, from leading experts in industry, government, and academia to students, and featured cutting-edge lectures and a lively Q&A session.

In his keynote speech, Judge Zigann introduced the accumulation of case law on recent SEP litigation in the courts of Italy, France, the Netherlands, and Germany. He also explained the pending cases before the Unified Patent Court (UPC), established last year, and the questions referred for preliminary rulings that are expected to be decided in the future. Furthermore, he analyzed the European Commission's draft SEP regulation, approved by the European Parliament, and its associated issues. He then shared his views on the nature of SEP litigation and the outlook for SEP disputes in the EU.

The workshop began with opening remarks by Professor Kimishima and guest remarks by Mr. Inomata of the Ministry of Economy, Trade and Industry. This was followed by a presentation from Attorney Matsunaga, who provided an overview of the latest trends in the UK, China, India, and Brazil, in addition to developments in the EU.

Next, Mr. Cohen focused on judicial strategies in Chinese courts, while Mr. Shimada outlined the national strategies being developed by China and the trends among Chinese companies.

Additionally, a lecture by Attorney Ikeda suggested the potential for utilizing competition law in license negotiations. In his lecture, Mr. Honda introduced the practices and current situation from the perspective of Japanese companies, clarifying the challenges they face and potential countermeasures. These presentations also provided analysis and raised issues concerning the SEP environment within Japan.

In recent years, the development of IoT technology has led to an increase in license negotiations between different fields. The gap between parties in these negotiations, often from different industries with distinct cultures, is becoming even wider. In this context, harmonization with industry, government, and academia in the global community is crucial for creating rules that can stably and predictably coordinate license negotiations where interests conflict. To this end, it is necessary to continuously monitor global trends and maintain dialogue with various countries. Against this backdrop, this workshop, which provided global perspectives on SEP trends from experts both in Japan and abroad, was extremely meaningful.

<Program>

■Opening Remarks

Yuko Kimishima (Professor, Faculty of Law and Graduate School of Law, Keio University; Director, KGRI; Head, Cyber-Physical Sustainability Center (CPS Center))

■Guest Remarks

Akihiko Inomata (Director, Intellectual Property Policy Office, Economic and Industrial Policy Bureau, Ministry of Economy, Trade and Industry)

■Lecture: "Global SEP Litigation Trends over the Past Year"

Shogo Matsunaga (Partner, Attorney-at-Law, Patent Attorney, Sonderhoff & Einsel Law and Patent Office)

■Keynote Speech (in English): "SEP Litigation in the EU - Recent Developments"

Dr. Matthias Zigann (Judge, Munich Local Division of the Unified Patent Court (UPC); Presiding Judge, 38th Civil Senate (Intellectual Property), Munich Higher Regional Court, Germany)

*Summary in Japanese by: Takatoshi Monya (Attorney-at-Law, Patent Attorney, Attorney-at-Law (New York), Nishimura & Asahi)

■Lecture (in English): "Will China Become an International Norm-Setter? China's Evolving SEP Policy from a US Perspective"

Mark Cohen (Former Director, Asia IP Project, Berkeley Center for Law & Technology (BCLT), University of California, Berkeley)

*Summary in Japanese by: Toshifumi Futamata (Chair, SEP Study Group; Visiting Researcher, Institute for Future Initiatives, The University of Tokyo)

■Lecture: "China's Path to Becoming an IP Powerhouse: National IP Policies and Trends in Chinese Companies"

Hideaki Shimada (Director of Intellectual Property, Hong Kong Office, Japan External Trade Organization (JETRO))

■Lecture: "Competition Law and SEPs"

Tsuyoshi Ikeda (Representative Partner, Attorney-at-Law, Ikeda & Someya)

■Lecture: "Considerations on Various Issues Surrounding SEPs through the Activities of Japanese Companies"

Hirotake Honda (General Manager, External Relations, Intellectual Property Division, NEC Corporation; Patent Attorney)

■Closing

Toshifumi Futamata

*Moderator: Toru Yoshioka (Kobayashi) (Lecturer, Institute of Innovation Research, Hitotsubashi University)

Co-hosted by:

・SEP Study Group

・Keio University Intellectual Property Forum

Supported by:

Ministry of Economy, Trade and Industry; Japan Patent Office; Japan Intellectual Property Association (JIPA); International Association for the Protection of Intellectual Property of Japan (AIPPI Japan); Keio University Global Research Institute (KGRI)

Date & Time: Monday, March 18, 2024, 13:00–18:00

Venue: Hall, 5th Floor, South School Building, Mita Campus, Keio University

Languages : English and Japanese *No simultaneous interpretation; lectures in English were summarized in Japanese

Photography by: Aki Takematsu