Fair Standards Alliance- friend of FRAND

A group of companies which include global firms such as BMW, Cisco, Dell, HP, Intel and Lenovo launched the Fair Standards Alliance this week in Brussels, aimed at ensuring licensing of standard-essential patents is done on fair, reasonable and non-discriminatory (FRAND) terms. The support revision made by IEEE. On the critical issue of Royalty on SEP, they state:
(a) Fair and reasonable royalties for a SEP must not tax features of a product that are unrelated to the patented invention 
Some SEP holders suggest that licensing rates should be based on downstream uses of standardised technology. Licensing polices that seek to charge such rates are unfair – they violate the FRAND commitment because they seek compensation for unpatented technologies or technologies that the patent holder did not invent or create. For example, when a smartphone has an innovative user interface that helps drive consumer demand for that device, the owner of a patent essential to a cellular standard should not be permitted to use that patent to appropriate any portion of the value of the user interface. Instead, in most circumstances, FRAND licensing rates should be determined with reference to the device, or the part of the device, that implements the patented invention; this ensures that the patent holder obtains fair compensation for what it actually invented, and not compensation for the value of others’ work or contributions. In other words, the price of a brick should be independent of whether that brick is used for building a garage or a mansion – and the royalty for a SEP associated with a standard that enables an Internet of Things (IoT) device to be wirelessly connected to other IoT devices (or the cloud) should be independent of whether that first IoT device is a smart watch, a refrigerator or a car. That is why it is so important to not blindly base royalty rates for SEPs on the overall value of an end device that makes use of the SEP’s invention, but to rather carefully consider the actual value that the SEP contributes to that end device. Often, that assessment can greatly be aided by considering the smallest component that actually implements the patented invention. When that part can be isolated as a separately saleable unit (a brick for building various types of buildings), a fair royalty rate will typically bear a relation to the price of that unit. 

IEEE amends it Patent (FRAND) Policy endorsing royalty payment on chip and not on the product.

Readers are familiar with court cases concerning royalty payments on essential patents for standards. Licensors like Qualcomm, Ericsson demand royalty of final product (mobile phone) whereas Indian Licensee feel royalty should be on the chip and not on the mobile or other form of finished products incorporating the chip. On February 8th the standard setting organisation IEEE voted to change patent policy and these changes largely relate to the commitment of IEEE members to license patents to users of IEEE standards on terms that are “fair, reasonable and nondiscriminatory” (FRAND). 
The contentious part says:

“Reasonable Rate” shall mean appropriate compensation to the patent holder for the practice of an Essential Patent Claim excluding the value, if any, resulting from the inclusion of that Essential Patent Claim’s technology in the IEEE Standard. In addition, determination of such Reasonable Rates should include, but need not be limited to, the consideration of:

• The value that the functionality of the claimed invention or inventive feature within the Essential Patent Claim contributes to the value of the relevant functionality of the smallest saleable Compliant Implementation that practices the Essential Patent Claim.
• The value that the Essential Patent Claim contributes to the smallest saleable Compliant Implementation that practices that claim, in light of the value contributed by all Essential Patent Claims for the same IEEE Standard practiced in that Compliant Implementation.
• Existing licenses covering use of the Essential Patent Claim, where such licenses were not obtained under the explicit or implicit threat of a Prohibitive Order, and where the circumstances and resulting licenses are otherwise sufficiently comparable to the circumstances of the contemplated license.

The vigorous pubic debate over the IEEE amendments highlights a rift in the standardization world between Patent Centric and Product Centric firms.  The business models that these firms have adopted are different, yet they have co-existed for decades.  Some have predicted that important contributors will leave IEEE as a result of the recent amendments. 

Qualcomm argument; 

Defining a “reasonable” royalty using controversial and unworkable valuation methodologies—including tying a royalty rate to the “smallest saleable component” of a standard-compliant device—all of which are intended to minimize licensing fees for SEPs.

Indian perspective

 IEEE endorsed a calculation based on the value of the chip inside the device, even if many other aspects of the device benefit from or use the contributed technology. This benefits local assembly of mobile phones and most other network based products and can enable Make-In-India.