Standards and standardisation play an important role in any industry. Potter Clarkson’s Ben Lincoln, who specialises in battery and energy-related technology, explores.

Standards are an integral part of many technologies and can help bring quality and consistency, and ensure interoperability between devices of different manufacturers. The global push to more sustainable methods of operating could increase the need for standardisation to help facilitate circular economies.

In the world of battery technology, standardisation of materials or formulations may allow for more effective re-use or recycling. Standardisation in battery charging technology or battery swapping schemes could also benefit the consumer. Battery safety and thermal runaway protection/mitigation technology could be specified by a standard. Standardisation could be beneficial in battery management systems to ensure effective communication and more uniform availability of enhanced functionality.

The IEEE already specify standards for the battery industry including the “IEEE Guide for Design, Operation, and Maintenance of Battery Energy Storage Systems, both Stationary and Mobile, and Applications Integrated with Electric Power Systems” and “IEEE Standard for the Design of Chargers Used in Stationary Battery Applications”.

As reported in the June 2023 issue of BEST, talk at the International Flow Battery Forum was about standardisation. In relation to flow batteries, it has been suggested that standards could be specified on material quality, technology and electrolyte. A common standard would mean a common recipe for electrolyte, allowing it to be used in different manufacturers’ batteries, for example.

Standards may start out relatively simple but can become more complex as a technology advances and there is a greater desire for interoperability.

How standardisation works

The need for standardisation may come from regulation. In other cases the industry may see the need for standardisation to help with its growth. The companies in most industries want to set themselves apart from their competitors and use intellectual property to secure those differences. Therefore, typically, an industry must share a common goal or face new regulation that creates an appetite for standardisation.

Typically, a standards setting organisation (SSO) is established that includes industry representatives to define the standards for a technology in a standard-setting process. Examples of SSOs include IEEE, the Society of Automotive Engineers and the American National Standards Institute but representatives of an industry can form a SSO.

The standard-setting process is usually carried out by industry representatives from different companies within the technology area who, over time, work together to come to a consensus on a new technology. These companies will be working on their own technologies at the same time, but standards are needed to make sure all their individual technologies can work together seamlessly or meet the common goal.

Innovation and standards

While the SSO is agreeing the standard, companies, including those companies who are part of the standard-setting process, may be developing their own technology or electrolyte recipes and may be applying for patents on those technologies and formulations.

While some SSOs may seek to avoid the standard including patent protected technology, it may not be possible. It could well be that a standard incorporates the patented technology of several different companies. A patent that protects technology defined in a standard is called a Standards Essential Patent (SEP).

The industry representatives who participate in the standard setting process may well push for the standard to include innovative formulations, materials or technologies. It may be in each company’s interest to have their technology adopted as the standard. Owning the patent to a standardised technology guarantees that there will be other companies using the technology and if a patent is a SEP, it is easy for a patent holder to spot any infringement as any company implementing the standard must by definition have implemented the technology covered by the SEP.

In general, for a complex standard, it is common for it to be covered by multiple SEPs all owned by different companies, and the ownership of a SEP often corresponds to a technical contribution made to the standard by a particular company. In other words, the more technical contributions a member company can have accepted into a standard, the more SEPs the member company is likely to own. It is common practice for each company to self-declare the patents it owns that it believes are SEPs.

In other circumstances and depending on the motivation for standardisation, it may be preferred for some patents to sit outside the standard to allow a patent holder to offer exclusive features or performance.

Patent licensing of SEPs

The licensing of SEPs enables other companies to use industry standard technologies. Because SEPs protect an industry’s core technology and others are required to implement that core technology to be standards compliant, it is necessary for others to obtain licenses for the SEPs covering that technology.

Generally, the standards-setting body have rules which set out how their members can implement a standards technology protected by SEPs owned by other members of the standards-setting body. This usually involves a licensing agreement, and it is common for SEPs to be licensed on fair, reasonable and non-discriminatory (FRAND) terms.

These licenses are designed to allow a technology to become standard by permitting companies who don’t own the necessary patents to implement the technology to support their businesses. While there are no set rules as to the content of FRAND terms, the license must be able to support the commercial needs of both the industry and the patent owner. The financial terms should allow the patent owner to continue to profit from their inventions but not so high that their licensors feel inventing around the patent is a more viable commercial option.

The VIA Licensing Alliance act as an administrator for the pool of patents relating to the Electric Vehicle Charging standard known as the ‘Combined Charging System’. It is stated that “Via LA’s EV Charging Patent Portfolio License provides access to technologies underlying worldwide standards for conductive AC and DC charging, connection, communication and safety used in equipment that provides electric charging in and to electric vehicles. Standards used in China, Europe, India, Japan and the US are included.”

The patents included in the licence include the patent rights of GE Hybrid Technologies; LG Energy Solutions; LG Innotek Co.; Mitsubishi Heavy Industries; Robert Bosch; Siemens; and Sun Patent Trust.

Licences can be taken out to cover different classes of items. For example “a unit that includes EV Charging Equipment capable of receiving AC electric charging via wired connection(s) in a Road Electric Vehicle” is classed under EV-A and has a fee of $10 per unit. The other classes of EV charging licences range from $40 per unit.

The VIA Licensing Alliance website also provides a list that cross references the claims of the patents in the patent pool to the relevant parts of the standard to make it clear which parts of the standard are covered by which patent.

The Alliance offer a licence to access patent rights for the Qi Wireless Power Standard.

The standardisation agenda

The practice around SEPs is most established in telecommunications where there are many technical challenges to overcome to achieve the dizzying communication speeds and reliability expected of modern communication networks. In other industries, the standards may be more straightforward with fewer opportunities for filing numerous patents to capture different parts of the emerging standard. However, there are common principles and lessons of which businesses need to be aware.

Firstly, it is important to consider the composition of a standards setting organisation. Not all innovators will necessarily be part of the SSO. This means that while the SSO will have discussed and agreed the standard amongst its members, there may be other parties who have not participated but may also have to make their patent available on FRAND terms. The FRAND terms may reduce the opportunity for some parties to exploit their rights.

Secondly, because SEPs are typically self-declared by the owner, it can also mean that patents which have been declared as essential to the standard do not actually cover the standard. This is commonly known as over-declaration and may artificially inflate the licence fees payable to meet the standard.

Standards also typically come with product markings or graphics that can only be used when the product meets the standard and use of the mark may need to be granted by the SSO. Thus, understanding the conditions of use of any mark is important before applying it to a product.

In summary, being aware of whether your industry is heading for standardisation is essential so that you can understand how your product line may need to be modified to meet a possible standard and also how your intellectual property may be impacted.