Toward Solving Disputes over Standard Essential Patents (SEPs): Licensing 5G SEPs

We are now in the era of the Internet of Things (IoT),
in which various things that have not been connected via networks hitherto,
such as home electronics and automobiles, can be done so.
Also, we are moving toward the 5G era, i.e.,
the fifth generation mobile communication system,
in which larger amounts of data can be exchanged in real time.
Meanwhile, standard essential patents (SEPs) are being used
for manufacturing products using advanced communication technologies,
such as IoT. Licensing negotiations that were conducted
among companies in the telecommunications
industry also are now being conducted between and
among different industries. As a result,
new issues have arisen about licensing agreements in terms of,
for example, differences in licensing rules and
methods of determining royalties.

Under these circumstances, the Japan Patent Office (JPO) is working
to formulate guidelines to be used to help
prevent or smoothly resolve disputes over SEPs.
At this symposium, experts from within and outside Japan,
including researchers from RIETI, legal professionals,
and intellectual property professionals,
will collaborate to discuss and report on the current
and future issues involving SEPs.
Discussions will be held on international arbitrations
that are expected to settle licensing negotiations
and disputes involving SEPs immediately in an integrated manner.



Time and Date: 9:30-18:00, Tuesday, March 13, 2018
Venue: Kioi Conference, Main Room
Languages: Japanese / English (with simultaneous interpretation)
Host(s): Japan Patent Office (JPO),
　　　　 Research Institute of Economy, Trade and Industry (RIETI)



9:30-9:35 Opening Remarks
NAKAJIMA Atsushi (Chairman, RIETI)

9:35-9:55 Keynote Speech
"Facilitating SEP Licensing -JPO's approach-"
MUNAKATA Naoko (Commissioner, Japan Patent Office)

9:55-10:25 Special Lecture 1
"Changes in the Environment Surrounding SEPs and Trends in Each Country in Recent Years"
David KAPPOS (Former Director, United States Patent and Trademark Office)

10:25-10:55 Special Lecture 2
"Current Situation and Issues of International Arbitration for
Resolving Disputes Concerning SEPs"
Randall RADER (Former Chief Judge, Court of Appeals for the Federal Circuit)

10:55-11:05 Break

11:05-12:25 Panel Discussion 1
"Ideal Modality of Negotiations on SEP Licensing"
【Session Chair】
Heinz GODDAR (Senior Partner, Boehmert & Boehmert /
German Patent Attorney and European Patent and Trademark Attorney)
【Panelists】 (in alphabetical order)
Gustav BRISMARK (Chief Intellectual Property Officer, Ericsson)
Christian LOYAU
(Legal Affairs Director, European Telecommunications Standards Institute (ETSI))
NAGASAWA Kenichi
(Group Executive of Corporate Intellectual Property & Legal Headquarters, Canon)
SUZUKI Masabumi
(Faculty Fellow, RIETI / Professor, Nagoya University Graduate School of Law)

12:25-13:40 Lunch Break

13:40-15:00 Panel Discussion 2
"Preventing Disputes over SEPs Involving Parties from
Different Industries in the 5G Era"
【Session Chair】
David KAPPOS (Former Director, United States Patent and Trademark Office)
【Panelists】 (in alphabetical order)
ENDO Yoshihiro
(Manager, Intellectual Property and Standardization Division, Honda Motor Co., Ltd.)
Dan LANG (Vice President of Intellectual Property, CISCO)
Max OLOFSSON (Director of Licensing, AVANCI)
Ilkka RAHNASTO (Vice President and Head of Patent Business, Nokia)

15:00-15:10 Break

15:10-16:30 Panel Discussion 3
"Concept for Calculating FRAND Royalty Rates"
【Session Chair】
NAGAOKA Sadao (Faculty Fellow, RIETI / Professor, Tokyo Keizai University)
【Panelists】 (in alphabetical order)
John HAN (Senior Vice President, Qualcomm Inc.
and General Manager, Qualcomm Technology Licensing)
Dylan LEE (Deputy Director for IP Licensing and Transaction, Huawei)
TAKAHASHI Hiroshi (Manager, IP Development Section 1, Innovation IP Department,
Panasonic Intellectual Property Management Corporation)
BJ WATROUS (Vice President & Chief IP Counsel, Apple Inc.)

16:30-16:40 Break

16:40-18:00 Panel Discussion 4
"Utilization of International Arbitrations as a Means
for Resolving Disputes over SEPs"
【Session Chair】
TAMAI Katsuya
(Professor, Research Center for Advanced Science and Technology, University of Tokyo)
【Panelists】 (in alphabetical order)
KATAYAMA Eiji (Attorney at Law, Patent Attorney, ABE, IKUBO&KATAYAMA)
Klaus GRABINSKI (Judge, Federal Court of Justice (Bundesgerichtshof), Germany)
Zhipei JIANG (Former Chief Judge, IP Supreme People's Court)
Randall RADER (Former Chief Judge, Court of Appeals for the Federal Circuit)

*Agenda is subject to change



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