Journal of Intellectual Property Law & Practice Advance Access originally published online on May 21, 2008
Journal of Intellectual Property Law & Practice 2008 3(7):457-460; doi:10.1093/jiplp/jpn084
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© The Authors (2008). Published by Oxford University Press. All rights reserved
Nokia v IDC: an essentially English judgment
Legal context: The case addresses whether the UK Court has a role to play in deciding whether patents declared to be essential to an international standard actually are essential.
Key points: The UK Court regards declarations of essentiality (or inessentiality) as commercially useful and therefore a legitimate use of Court resources and powers. The Court will take a pragmatic and not overly linguistic approach to comparing patent claims and standards. As many observers have suspected would be the case, it appears a lot easier to self-declare a patent as essential than it is to have that view endorsed by the Court.
Practical significance: With the growing importance of internationally agreed standards in the electronics and telecom fields, the issue of whether or not patents said to cover the standardized technology actually do is of increasing commercial significance. The UK Court's willingness to grapple with the question of essentiality in a robust and pragmatic way could be of great utility to those seeking to licence or be licensed for standardized technologies. The recent Nokia v Interdigital case addresses whether the UK Court has a role to play in deciding whether patents declared to be essential to an international standard actually are essential. The decision indicates that the UK Court regards declarations of essentiality (or inessentiality) as commercially useful, and therefore a legitimate use of Court resources and powers. The Court took a pragmatic and not overly linguistic approach to comparing patent claims and standards. It appears that, as many observers have suspected, it is a lot easier to self-declare a patent as essential than it is to have that view endorsed by the Court. The UK Court's willingness to grapple with the question of essentiality in a robust and practical way could be of great utility to those seeking to licence or be licensed for standardized technologies.
Key Words: The UK Court regards declarations of essentiality (or inessentiality) as commercially useful and therefore a legitimate use of Court resources and powers. • The Court will take a pragmatic and not overly linguistic approach to comparing patent claims and standards. • Certain potentially significant issues, such as so-called ‘2nd limb essentiality’, were raised late in the proceedings and were not addressed by the decision.
* Partner and Associate, respectively, at Bristows, London. The authors are grateful for helpful discussions with, and input from, Pat Treacy, head of competition law at Bristows. Email: myles.jelf{at}bristows.com. Michael Stevenson, email: michael.stevenson{at}bristows.com