Targeted, Not Transformative: The UKIPO’s Considered Course on SEPs

The UKIPO today published its response to it’s SEP consultation, and has chosen targeted action over sweeping reform. Rather than pursue wholesale change, the government will aim to introduce a series of discrete measures. Whilst some may criticise that caution, the UKIPO has recognised the polarity in the SEP debate and focused on substantiated evidence over anecdote. Crucially, the UKIPO has recognised not only where change is needed, but where it is not. That restraint deserves credit.

In July 2025, the UK government published a consultation on SEPs, seeking input on ways to improve dispute resolution, essentiality services and efficiency and transparency in SEP licensing. On 13 October, the government published its response: Government response to the consultation on Standard Essential Patents - GOV.UK. ‍

Dispute Resolution

The Rate Determination Track

The government had previously suggested the idea of a specialist track in the Intellectual Property Enterprise Court (“IPEC”, a UK IP-specialist court dedicated to quickly hearing lower value IP disputes) for determining FRAND royalty rates. Whilst there was, unsurprisingly, a desire from all quarters to have quicker, cheaper and more predictable ways of resolving FRAND disputes, the government recognised the difficulties this approach would face in practice, and concluded that a dedicated track would not achieve these aims. In particular, emphasising speed and cost could compromise the quality of the decisions, and reduce confidence in the decision making. As a result, the government has decided to focus on a series of alternative measures.

Court-Anchored FRAND Determination Mechanism

The government will consult with the judiciary on potentially developing a new Practice Direction for SEP court cases. This could provide for a stay, possibly an automatic stay, in court proceedings, to allow for alternative dispute resolution. In particular, the government is considering developing an Early Neutral Evaluation (“ENE”) FRAND determination mechanism, by which a judge would provide an early, non-binding determination of what is FRAND. Cost consequences for non-compliance have also been suggested.

Whilst there may be significant questions around how meaningful an early indication would be, given it would be presumably be based on limited evidence, a potentially greater concern would be the extent to which a stay may be used tactically by one or other party. FRAND litigation is frequently multi-jurisdictional, and a delay to the UK proceedings could favour a party looking to more quickly progress litigations in other jurisdictions.

Although not mentioned in the government response, Lord Justice Arnold  has proposed that the English court could be used to set the terms for a FRAND arbitration, where the parties have not been able to reach agreement. This is something which could be potentially included in a new practice direction. Other possibilities may include greater prescription on early disclosure and confidentiality.

A SEP Pre-Action Protocol

The government will also conduct a feasibility analysis on developing a pre-action protocol for FRAND disputes. As part of this the government has acknowledged the need to avoid conflict with existing case law and practices (such as the CJEU’s Huawei v ZTE principles). The aim will be to clarify expectations for early conduct, rather than alter substantive rights, with the government’s primary concern being information asymmetry during negotiations.

The Availability of Injunctions

There was significant divergence in the evidence provided on the question of injunctive relief for SEP infringement. However, the government noted that the evidence provided by implementers to illustrate the use of injunction threats “were largely anecdotal” and “were balanced by evidence from some rightsholders that they were justifiably used”, and there “was general agreement that the actual issuance of injunctions by courts disrupting UK market access was rare”. Consequently, the government has decided there is not a need to legislate to limit the availability of injunctions.

IPO-led FRAND Opinion Service

The government will assess the feasibility of a FRAND opinion service, to be provided by the UKIPO, to provide an indicative opinion as to whether a particular offer falls within a FRAND range. The service would be voluntary and non-binding, and is intended to assist early-stage licensing discussions.

At this stage, the government is merely investigating whether this might work, and has not set out any concrete proposals. How this can be made to work efficiently, without getting bogged down in evidence equivalent to a court proceeding will be key. It will also be important to ensure this is not a potential tool for simply delaying negotiations, particularly given its non-binding nature. One potential advantage would be if this were to provide a means for enabling disclosure of comparable licences under a suitable confidentiality regime, so as to facilitate negotiations.

ADR

The evidence showed that a range of ADR services already exist, and so the government does not propose to introduce a new standalone mechanism (although as noted above, will look to develop an ENE process within the existing court procedure). Instead, the government perceives the problems with the uptake of ADR to relate to lack of predictability and confidence in outcomes, and lack of transparency. The government will try to address this through the other measures set out above, in order to increase the attractiveness of ADR to FRAND disputes.

Searchable SEP Information

The government stated that there is compelling evidence that standard related patent information is currently fragmented, inconsistent and difficult to use. They therefore propose a system for disclosure of standard related patent information to the UKIPO on a voluntary basis (although the possibility for mandatory disclosure), with information being disclosed upon grant of a UK patent. This would only apply to future standards and so not be retrospective, and would not involve verification of essentiality.

The government seems to believe that because this information to be provided later, when standards are more likely to be finalised, the information may be more accurate. However, given the ongoing race for patent owners to expand their portfolios of declared SEPs, it seems unlikely that a patentee who has previously declared a patent as being essential would then decline to repeat this at the UKIPO. Of course, not all standard setting organisation require declarations of individual patents or patent families, and so there could be circumstances in which this would represent the first declaration of essentiality for a patent family to a particular standard.

There must also be a question as to how valuable a database of UK-only rights would be, although the government acknowledges the need to work with the EPO, WIPO and others to help compliment a wider international system.

UKIPO Essentiality Checking

The evidence provided did not convince the government there was a need for an essentiality checking service to be provided by the UKIPO, particularly given the uncertainty over its complexity, cost and feasibility. The possibility of a low uptake, and potential unintended consequences on licensing negotiations were also factors in the government’s decision. There was also a concern expressed about drawing the government into a quasi-judicial role, although this would already seem to apply to the UKIPO.

Instead, the government will explore setting out non-binding best practice principles for essentiality assessments and reporting, e.g. in relation to claim charting, sampling approaches and assessor expertise.

FRAND Licensing Guidelines

Given concerns about bad faith negotiation tactics, and the need for clear guidance on FRAND negotiations, particularly for SMEs, the government will look to work with industry to develop SEP licensing guidance on how “rightsholders and implementers should act transparently and promptly in negotiations to encourage good faith negotiation and fair conduct”.

The government also intends to publish guidance on how to navigate the FRAND services available in the UK, including existing measures and any new aspects arising from this consultation. An expansion of the UK SEP Resource Hub is also under consideration.

Summary

Overall, the government’s response is a set of further assessments and feasibility studies as to ways in which it may help to improve the SEP ecosystem, as well as a number of decisions not to take particular actions. This should not be seen as a lack of ambition, but rather a proportionate response to the evidence received, and an acknowledgement of the potential harm that overly strident government intervention may cause. In particular, the UK government has recognised that any measures it takes must be supported by comprehensive evidence. It is to be hoped that this approach is followed as it proceeds with the various measures set out in this response and decides on which further developments to adopt.

Author: Andrew Sharples - Partner, UK and European Patent Attorney, Solicitor, UPC Representative