Standard Essential Patents (SEPs)

Study XCIII - Project on standard-essential patents (SEPs)

Background

In April 2025, UNIDROIT received a proposal from the World Intellectual Property Organization (WIPO) for a project on standard-essential patents (SEPs) (UNIDROIT 2025 − C.D. (105) 4 rev., paras 95-110 and Annexe VI).

SEPs protect technologies indispensable for implementing technical standards such as 5G, Wi-Fi, or Bluetooth, thereby ensuring interoperability. To address competition concerns, SEP holders commit under Standard Developing Organisation (SDO) intellectual property policies to license these patents on fair, reasonable, and non-discriminatory (FRAND) terms. This framework ensures access to essential technologies while preserving incentives for innovation, balancing the interests of SEP holders and implementers, and securing societal benefits.

The rapid development of technology leads to a continuously growing number of SEPs. At the same time, the international character of technological standards clashes with the territorial nature of patents rights. The absence of a transnational harmonised legal framework generates legal fragmentation and considerable uncertainty, which in turn leads to increasing litigation in different jurisdictions with different outcomes, which could ultimately undermine innovation and hamper access to essential technologies.

Given such context and drawing on earlier joint exploratory work undertaken by the two Secretariats, the WIPO proposal aimed at developing international guidance to foster legal certainty and predictability in the area of SEPs licensing, to reduce the current fragmentation, number of disputes and forum shopping. In particular, the proposal aimed to explore the legal nature of FRAND declarations, the legal consequences of SEPs transfers, global rate setting and aspects of private international law (including dispute settlement), and the extent to which the UNIDROIT Principles of International Commercial Contracts might provide a legal framework for the contractual aspects of FRAND license agreements, including the pre-contractual phase.

At its 105th session, the Governing Council examined the WIPO proposal and recommended that the topic be included in the 2026-2028 Work Programme as a project with low priority, such that the Secretariat could continue joint work with WIPO to further define its scope (C.D. (105) 32).

 

On 26 March 2025, the UNIDROIT Secretariat and WIPO jointly organised a Exploratory Workshop on Standard-Essential Patents, online and in presence at the seat of the Institute in Rome.

The Workshop, opened by UNIDROIT’s President and with introductory remarks from the Secretary-General and a representative of the WIPO Secretariat, was attended by ten experts from different regions of the world (from academia, judiciary, private practice, and stakeholders – both from the side of SEP owners and SEP implementers).

The purpose of the Workshop was to discuss the need for international guidance on the private law aspects of SEPs and their licensing on FRAND terms. The attendants discussed, in particular, the general scope of a possible joint UNIDROIT-WIPO project in this area and legal issues concerning FRAND declarations and FRAND licence agreements.

The workshop considered current developments in SEPs and confirmed the need for international guidance at the contractual level.

Following the inclusion of the project in the 2026-2028 Work Programme and in line with the Governing Council’s deliberations, the UNIDROIT Secretariat and WIPO are continuing joint work to further define the scope of the project, develop a more in-depth articulation of key issues, and arrange a tentative schedule for future work.