Friday, 21 November 2014
News on Enforcement of Standard Essential Patents under FRAND
Among other things, the Advocate General proposes to stipulate that:
the SEP holder must, in any event, present the alleged infringer with a written offer of a licence on FRAND terms and that offer must contain all the terms normally included in a licence in the sector in question, including the precise amount of the royalty and the way in which that amount is calculated.
The most surprising part in my view is the proposal that the infringer’s conduct cannot
be regarded as dilatory or as not serious during negotiations for a licence on FRAND terms if it reserves the right, after entering into an agreement for such a licence, to challenge before a court or arbitration tribunal the validity, use and essential nature of that patent.
This is likely to create conflicts with the existing German case-law unambiguously accepting the right of the patentee to terminate a license agreement for good cause if the licensee files a nullity action against the patent. In the case of a co-pending nullity suit, the principle of dolo agit, qui petit, quod statim redditurus est (foreclosure to claim something the claimant would have to return immediately because the corresponding counterclaim exists) therefore forecloses the licensee from forcing the patentee into an agreement which could then be terminated by the patentee immediately.
A comment by Colm Ahern can be found here.
The full text of the opinion can be found here.
The Orange Book Standard is discussed e.g. here.