FRAND & Standard-Essential Patents (SEPs)

We act for holders of standard essential patent portfolios and for licence seekers alike, at every stage.

• Essentiality audit and portfolio mapping.
• Conduct of the negotiation within the framework laid down by the judgment in Huawei/ZTE de la Cour de justice de l’Union européenne (C-170/13, 16 juillet 2015) : notification, offre FRAND, contre-offre, garanties.
• Injunction litigation and defences based on abuse of a dominant position.
• Setting the FRAND rate, analysing comparable licences and handling their confidentiality.
• Arbitration and mediation, often better suited to the global dimension of these disputes.

FRAND litigation is won first on the characterisation of the parties’ conduct: did the proprietor make an offer that was really FRAND? Did the implementer negotiate in good faith or play for time? Every letter, every offer, every silence counts. We structure that chronology from the outset (or reconstruct it for the purposes of the trial) because it is what the judge will read.

The firm’s founder devotes a constant part of his activity to research on FRAND licensing: a dedicated book, academic publications and regular contributions to the European debate. Our clients benefit directly from that work: tested arguments, anticipation of developments, an academic and professional network in the main jurisdictions. See also our page on Patent litigation and our practice before the UPC.

FRAND litigation is shifting from the question of the injunction to that of price. Two methods dominate the discussion: comparison with existing licences, which requires obtaining production of those agreements and neutralising portfolio and bundle effects, and the top-down approach (top down), which starts from an aggregate rate for the standard and then apportions it according to the portfolio’s share of the patents that are actually essential. The debate then turns on the royalty base, the geographical scope of the licence and the treatment of past sales.

Before the Unified Patent Court, access to comparable licences has already become a procedural issue in its own right: see our analysis of the orders for production of comparable licences in the Panasonic cases.

The Mannheim Local Division gave the first decision on the merits on the FRAND defence on 22 November 2024 (Panasonic v Oppo, UPC_CFI_210/2023, EP 2 568 724), followed on 18 December 2024 by the Munich Local Division (Huawei v Netgear, UPC_CFI_9/2023). These decisions assess the parties’ conduct in the negotiation as a whole, rather than as a succession of formal steps the slightest breach of which would automatically be penalised.

Our analyses: the first UPC decision on FRAND licences, licensing strategy in the Oppo litigation and the preliminary question of essentiality.

Paris holds a place of its own in this litigation, notably through anti-anti-suit injunctions intended to preserve the jurisdiction of the European courts against anti-suit injunctions obtained elsewhere. See our analysis of the Xiaomi case before the Paris courts and, for the transposition of that reasoning before the Unified Patent Court, anti-anti-suit injunctions before the UPC. On the interplay with competition law, see patents and competition law.

In April 2023 the European Commission proposed a regulation on standard essential patents, providing for a register, essentiality checks and a FRAND rate determination prior to litigation. It announced its withdrawal in its 2025 work programme, presented on 11 February 2025, for want of a foreseeable agreement between the co-legislators. FRAND negotiation therefore remains governed by contract, competition law and case law, with no mandatory administrative step.