Standard essential patents (SEPs) protect inventions that are implemented in millions of products that rely on connectivity through standardized technologies such as 4G, 5G, Wi-Fi or audio and video codecs. Patent holders must provide access to SEPs, while they receive a monetary return for their patents to recoup earlier R&D investments. In a globalized economy, the licensing of these SEPs takes place on a worldwide level while enforcement is local, leading to geopolitical complexities. A well-functioning framework for the determination of Fair, Reasonable, and Non-Discriminatory (FRAND) licensing terms is more important than ever. To help you gain a clear understanding of what goes into determining the value of SEPs and relevant FRAND rates, hosted a webinar with a panel of experts who bring decades of industry experience to shed light on these topics:

Do we need more transparency? Who will benefit?

  • SEP claim chart certification – would a database of publicly available claim charts really help?
  • Late SEP disclosures – what is the common practice in the industry?
  • Extensive NDA provisions – do they hinder transparency?

How to increase efficiency in SEP licensing? How will 5G and IoT change the game?

  • Where to license in the value chain for the IoT use case?
  • Will regulation help or not? Opinions on the public consultation of the US, UK, EU and METI in Japan.
  • FRAND negotiations. How both licensors and licensees should commit to a more efficient process.

This exclusive IPlytics webinar and the invited panel shed light on the above topics from the licensors’ point of view. The panel consisted of the following honorable discussants:

  • Bowman Heiden, Professor at CIP and Berkeley

  • Clemens Heusch, VP Litigation at Nokia

  • Jorge Padilla, Senior Director at Compass Lexecon

  • Richard Vary, Partner at Bird & Bird

Bowman Heiden
Dr. Heiden is currently the Co-Director of the Center for Intellectual Property (CIP), which is a joint center for knowledge-based business development between University of Gothenburg, Chalmers University of Technology, and the Norwegian University for Science and Technology. He is also the Executive Director of the Tusher Center for the the Management of Intellectual Capital at UC-Berkeley and co-chair of the Technology, Innovation, and Intellectual Property program at the Classical Liberal Institute at the NYU School of Law. Dr. Heiden was recently a member of the European Commission High-Level Expert Group on Standard Essential Patents. Previously he was Innovation Director for the Qatar Science & Technology Park, where he was responsible for driving innovation strategy and intellectual property policy. Over the past ten years, Dr. Heiden has managed over 100 innovation projects with industry, university research institutes, healthcare providers, and start-up ventures.

As Co-Director of CIP, Dr. Heiden has co-founded and developed the Intellectual Capital Management (ICM) and Business Creation and Entrepreneurship in Biomedicine (BCEB) master’s level programs, CIP FORUM, the Business of Intellectual Property executive program, and the CIP Internship Program. Dr. Heiden holds degrees in engineering, technology management, and economics, and his research is at the interdisciplinary interface of economics, law, and innovation, in particular, intellectual property and open innovation in knowledge-intensive sectors. Before turning his focus to the field of knowledge-based business, Dr. Heiden played professional basketball in a number of European countries.

Clemens Heusch
Dr Clemens-August Heusch LL.M. is VP and Head of Global Litigation and Disputes at Nokia, responsible for litigation, arbitration and mediation globally with a strong focus on multi-national IP litigation and arbitration. Since 2008 Nokia has been involved in more than 200 patent cases worldwide. Before joining Nokia in 2008, Clemens was an attorney-at-law at the international law firm Bird & Bird LLP. He studied law at the Universities of Freiburg and Bonn, Germany; received an LL.M. degree from the University of Maastricht, Netherlands, and a doctorate from the University of Cologne, Germany. During his traineeship, he worked inter alia in the competition law team of Freshfields Bruckhaus Deringer in Cologne and Brussels, Belgium. Clemens is a registered lawyer at the Cologne Bar and is a certified IP lawyer. Fluent in German, English and French, he regularly presents and writes on a range of legal topics. He is based in Germany.

Jorge Padilla
Dr. Padilla earned M. Phil and D. Phil degrees in Economics from the University of Oxford. He is Research Fellow at the Centro de Estudios Monetarios y Financieros (CEMFI, Madrid) and teaches competition economics at the Barcelona Graduate School of Economics (BGSE) and at the Toulouse School of Economics (TSE). He has given expert testimony before the competition authorities and courts of several EU member states, as well as in cases before the European Commission. Dr. Padilla has submitted written testimony to the European General Court, and the UK Competition Appeals Tribunal in cartel, merger control and abuse of dominance cases. He has also given expert testimony in various civil litigation (damages), international arbitration cases, and competition cases in non-EU jurisdictions (Argentina, Australia, Brazil, Canada, Chile, China, Colombia, India, Israel, Jamaica, Singapore, South Africa, Turkey and the United States). Dr. Padilla has written numerous papers on competition policy and industrial organization in the Antitrust Bulletin, the Antitrust Law Journal, the Economic Journal, the European Competition Journal, the European Competition Law Review, the Fordham International Law Journal, Industrial and Corporate Change, the International Journal of Industrial Organization, the Journal of Competition Law and Economics, the Journal of Economics and Management Strategy, the Journal of Economic Theory, the RAND Journal of Economics, the Review of Financial Studies, the University of Chicago Law Review, and World Competition. He is also co-author of The Law and Economics of Article 102 TFEU, 3rd edition, Hart Publishing, 2020.

Richard Vary
Richard is a partner at Bird & Bird, working on SEP litigation, with a unique expertise in the valuation of portfolios and FRAND. Before Bird & Bird, Richard was Vice President and Head of Litigation at Nokia, where he managed global commercial litigation and was part of the Legal & Compliance leadership team. This mostly involved mobile telecoms patent litigation and arbitration all around the world, and he had a very successful track record in global patent litigation strategy. He was awarded ‘In-House Counsel of the Year’ by “The Lawyer” and has twice been recognised in Managing IP’s annual list of the 50 most influential people in intellectual property. Richard is a part-time District Judge in the London and South East circuit, and in the Intellectual Property Enterprise Court.

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