FRAND and the World of Technology Licensing – Episode 5

January 25, 2022

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  • Sonja London, TactoTek

Sonja London is General Counsel and Licensing Executive in TactoTek, world-leading innovator in the field of smart surfaces and structural electronics. Sonja has global responsibility of TactoTek’s legal and compliance matters as well as IP, licensing and standardization strategies. Before joining TactoTek, she worked with Nokia Patent Business for 14 years in various roles, in her latest position leading Nokia’s Consumer Electronics licensing globally. Sonja has been deeply involved in licensing of various technologies (such as cellular 3G, 4G and 5G, wifi, audio and video codecs AVC/HEVC) for consumer electronics, mobile devices and infrastructure products. Her experience covers also patent pools, joint licensing, patent transactions as well as digitalizing and managing licensing business. In addition, Sonja is involved in deep technology and software start-ups and IP and growth companies as board member, investor and advisor. She serves as Non-Executive Director of Licensing Executives Society International. Sonja holds a Master of Laws from University of Helsinki and Executive MBA from Aalto University. She is ranked in IAM Strategy 300 as one of the world top IP Strategists.

Sonja started with Nokia about 15 years ago, where SEP licensing evolved from mostly cross licensing across a few large companies to out licensing, and SEPs began to create considerable revenues for Nokia. In her latest role as Head of Consumer Electronics Licensing she was able to grow the program and team over the years which was highly successful.

“A 2-year process can be considered quick where both parties – the licensor and licensee – are willing to make a SEP deal.”

However, just having a SEP portfolio of “gold nuggets” is not enough to create revenues. Put differently licensing is a hard job as negotiations with licensees are complex and lengthy. For Sonja a 2-year process can be considered quick where both parties – the licensor and licensee – are willing to make a SEP deal. Sonja however also had situations which she describes as “hold out” where licensees don’t answer to emails for almost a year, make unreasonable requests such as NDAs limiting the licensors of using their own information, ask for highly confidential business insights or even make specific offers verbally within a 60-minute time frame to answer. All of these “delaying” tactics make it difficult to find agreement and closing deals takes a lot of time. This back and forth in FRAND negotiations is sometimes referred to as “FRAND dance”. And Sonja notes it is often some of the biggest companies in the world that hold out, very strategically and that should be seen as issue for the whole market. Companies such as Nokia put in years and billions of dollars in R&D to develop technologies such as 5G. Royalties are re-invested to develop the next generation.

15 years ago SEP licensing went from cross-licensing to out-licensing. Recently SEP licencing reached another level going beyond the smart phone industry. New industries and licensing may work in very different licensing model and may create new challenges.

Sonja has left Nokia last year joining TactoTek as the General Counsel and Licensing Executive. In her new position she does a lot more technology licensing these days. The big difference to pure patent licensing and technology licensing is that the license comes with technology and know-how. Here licensees are much easier to work with because the perception is positive: the license delivers tangible value and licensing is more of a cooperation process.

While working in licensing for many years Sonja also wears many other hats being a board member or a minority investor for software start-ups but she also does a lot of non-profit work. Sonja has served as board member and President of the Licensing Executives Society Scandinavia, expanding her influence also to international level in the LES High-Tech Committee and from 2021 also as a board member of LES International. Sonja is passionate about great leadership, diversity and inclusion at work. Her latest and dearest pro-bono advocacy project has been co-founding the Women in Licensing Alliance for LES International, an international initiative aiming to visibly role model and support the inclusion of women in the licensing profession and leadership.

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