The full text of the Automobile Standard Necessary Patent Licensing Guidelines (2022 version) is released: Promoting the benign integration of different industries-Industry News-Shenzhen deep trust patent Agency Co., LTD

News Updates

NEWS CENTER

Related News

There is currently no data available

Home

The full text of the Automobile Standard Necessary Patent Licensing Guidelines (2022 version) is released: Promoting the benign integration of different industries

Release Time：

2022-09-13

The China Automotive Technology and Research Center and the China ICT Institute jointly issued the Guidelines on Licensing of Automobile Standard Essential Patents on the 13th. The development of intelligent connected vehicles is accelerating, and the connected functions require the use of wireless communication technology, which involves communication standards and necessary patent licensing issues.

The China Automotive Technology and Research Center and the China ICT Institute jointly issued the Guidelines on Licensing of Automobile Standard Essential Patents on the 13th.

With the rapid development of the intelligent and connected automobile industry, communication, Internet and other technologies and the automobile industry show a trend of integrated development, and different industries have great differences in intellectual property protection and patent licensing modes, resulting in a series of new problems such as cross-industry standard and necessary patent intellectual property licensing. It has led to an increasing number of intellectual property lawsuits and disputes in the automotive industry and the communications industry worldwide.

The Guidelines on Licensing of Automobile Standard Essential Patents include five parts: core principles, calculation principles of reasonable licensing fees, and interpretation rights and declarations. The release of this guideline will accelerate the cross-border integration and development of industries such as automobiles and communications, and protect fair market competition.

The Guidelines clearly put forward the important principle that "any link in the industrial chain is eligible for licensing". This also means that enterprises, including parts, have the right to obtain licenses, which will further promote the healthy and sustainable development of China's intelligent connected automobile industry.

Automotive industry Standard Essential Patent Licensing Guidelines

(2022 edition)

The automobile industry is a leading industry in a new round of scientific and technological revolution. Intelligent networked vehicles are developing vigorously, and automobile technology and cross-industry technologies represented by wireless communication technology show a trend of integration and development. The technical standards followed by automobile products involve more and more patented technologies. Thus, new problems such as standard essential patent licensing are derived.

In order to further promote the high-quality development of the automotive industry and form a positive interaction and integrated development between different industries, China Automotive Technology Research Center Co., Ltd. and China Academy of Information and Communications Technology, relying on the Intellectual Property Branch of the China Society of Automotive Engineering, the IMT-2020 (5G) Promotion Group and the Automotive Standard Essential Patents Working Group, Organize industry experts to draft, study and demonstrate, collect opinions in their respective working groups, and form "Guidelines for the licensing of Automobile Industry Standard Necessary Patents" as a reference for the industry.

I. Definition

"Standard Essential Patent (SEP)" means a patent that is necessary for the implementation of a technical standard.

"Automotive product" refers to the parts or complete vehicles of an automobile.

"Automobile industry Standard Essential Patent" means the standard essential patent covered in the technical standard followed by the automobile product.

The principle of "fair, reasonable and non-discrimination" is recognized by international standardization organizations as the licensing principle, also known as the FRAND principle.

II. The core principles of automobile standard essential patent licensing

1. Principle of balance of interests

Standard essential patent licensing should follow the principle of balance of interests, not only to ensure that the patentee's innovation investment can get a reasonable return, but also to keep the license fee within a reasonable range, so as to ensure that the technical standards can be widely popularized and applied to promote the healthy and sustainable development of the automobile industry, in addition, the interests of the public should be considered.

2. Principle of fairness, reasonableness and non-discrimination

The principle of "fair and reasonable" mainly means that the standard essential patentee has the right to receive returns on its R&D investment and technological innovation under the premise of following the FRAND principle, but the patentee's licensing returns should be maintained within a reasonable range.

The principle of "non-discrimination" means that the standard essential patentee should license the applicator under the essentially same or similar conditions, and should not refuse the license without reason or attach unreasonable license conditions; Significant differences in licensing conditions or terms should be reasonably explained to avoid placing those who apply substantially the same or similar conditions at a competitive disadvantage.

In the standard-essential patents committed by the standardization organization, if there is a subsequent succession, transfer and other changes in the ownership of the patent, the original patentee should and its successors or assigns through appropriate forms, so that all subsequent successors or assigns are still subject to the principle of fairness, rationality and non-discrimination.

3.Any link of the industrial chain is eligible for licensing principle

Under the ISO FRAND commitment or ISO intellectual Property Policy, any bona fide patent implementer has the right to obtain a standard Essential patent license, and the standard essential patent holder is obliged to grant a license to any implementer who wishes to obtain a license, regardless of their position in the industrial chain.

Standard essential patent owners should not double charge standard essential patent licensing fees to manufacturers at different levels in the same industry chain.

4. Negotiate the principle of handling industry differences

The automotive industry chain system is complex, with tens of thousands of parts on the vehicle. In the current mature industrial practice, the general business practice of the automotive industry is the vertical licensing mode of the industrial chain, that is, the automotive enterprises usually solve the intellectual property licensing problems of their parts and components by the upper level suppliers in the way of contract agreement. And vehicle companies usually solve the intellectual property issues of various parts and components on the vehicle through suppliers.

When there are differences or differences between the standard essential patent licensing model for automotive products and the current licensing model and business practice of the automotive industry, it is appropriate to fully respect and consider the industry characteristics and business practices of the two industries, negotiate and negotiate in a positive and good-faith manner, and seek a licensing model acceptable to both parties.

Ⅲ. Principles for calculating reasonable license fees

1. Standard necessary patent license fee calculation base

As for the calculation base of the standard essential patent license fee, the product unit that the standard essential patent technology actually contributes to the automobile product should be taken as the calculation base of the license fee, and other product units unrelated to the standard essential patent technology should be avoided.

Whether the parts of the automobile product or the whole vehicle is used as the basis for the calculation of the license fee, the contribution of the standard essential patent technology to the actual value of the automobile product should be considered; In addition, the standard essential patent license fee calculated for the same automotive product should be roughly the same regardless of the license level, and there should be no significant difference in license fees due to different license levels.

2. Consideration of license fee

A reasonable license fee should consider the actual value contribution of the standard essential patent technology to the automobile product, the cumulative license rate of the industry, the number of standard essential patents held by the patentee, the geographical distribution of the patent and other factors, and the license rate should not benefit from the patent being included in the standard.

The contribution of standard essential patents to the value of automobile products needs to consider that the value of automobile products is composed of technology, market, production, brand, after-sales and other links, especially the contribution of brand in the value of automobile products; The contribution of standard essential patented technologies to the sales and profits of automotive products should also be considered.

Patent rights have regional attributes, reasonable licensing fees can also consider the implementer's production and sales areas, the patentee's patent geographical distribution and different regional economic level differences and other factors, can be applied to different regions of different licensing rates.

3. Cumulative license rate limit principle

In order to ensure the balance of interests between the licensor and the licensor, the sum of the standard necessary patent license fees for automotive products shall have a reasonable upper limit, which may be a certain proportion of the reasonable profits of the industry in which the licensed products are located.

The cumulative licensing rates for standard-essential patents under the same technical standard can vary in different industries.

4. Reasonable choice of license fee calculation method

The standard essential patent license fee can be calculated by top-down method, comparable license agreement method, etc.

The "top-down" method can avoid the problem of stacking patent license fees. This method first needs to determine the upper limit of the cumulative license rate of all standard-essential patents in a specific standard, and then calculate the reasonable license fee ratio of different patent owners by calculating the actual proportion of standard-essential patents.

When adopting the comparable license agreement method, factors such as the subject of the license transaction, the licensed product, the licensed territory, the subject matter of the license, the transaction object included in the license and the negotiation process of the licensor and the licensor can be comprehensively considered.

Whether the "top-down" method or the comparable license agreement method is adopted, the proportion of the actual standard essential patents and the geographical distribution of the standard essential patents of the patentee should be considered, and the actual contribution and proposal of the standard essential patentee can be considered.

Ⅳ.Right of interpretation and declaration

These guidelines are interpreted by the Intellectual Property Branch of the China Society of Automotive Engineering, the IMT-2020 (5G) Promotion Group and the Automotive Standard Essential Patents Working Group.

These guidelines shall come into force as of the date of promulgation.

If there is any inconsistency between the provisions of these Guidelines and the current domestic laws and regulations, the current laws and regulations shall prevail.

Intellectual Property Branch of China Automotive Engineering Society

IMT-2020 (5G) promotion group

Working Group on Automotive Standard Essential Patents

September 2022

Download attachment:

Annex 1: Guidelines on Licensing of Essential Patents for Automotive Industry Standards (2022 Edition) (Chinese version)

Annex 2:《Guidelines of Standard Essential Patent License for Automotive Industry (2022 Edition)》（English Version）

More intellectual property information and services

Pay attention to [Shenkexin Intellectual Property] Official subscription number