Injunctions and standard essential patents

The question of injunctions and standard-essential patents is at the heart of FRAND litigation. The holder of a essential patent for a standard has, like any patentee, the right to seek an injunction against acts of infringement. But it has undertaken to grant licences on FRAND terms, and an injunction would hit every standard-compliant product. The relationship between injunctions and standard-essential patents was set by the Court of Justice of the European Union in the Huawei v ZTE judgment of 16 July 2015, available on the website of the Court of Justice.

The framework of the Huawei v ZTE judgment

The Court held that the holder of a standard-essential patent in a dominant position does not commit an abuse by seeking an injunction if it follows a sequence. First, it must alert the alleged infringer to the infringement complained of, designating the patent and the way in which it is infringed. Next, if the infringer expresses its willingness to conclude a licence on FRAND terms, the holder must present a specific written offer specifying the royalty and the way in which it is calculated. Then the infringer must respond diligently and in good faith, without delaying tactics, with a written counter-offer complying with FRAND terms if it rejects the offer. Finally, if the counter-offer is rejected, it must provide appropriate security and render an account of past acts of use. The parties may agree to entrust the determination of the rate to an independent third party.

Application by the courts

National courts have applied this framework with different emphases. The German courts have focused on the manufacturer’s genuine willingness to take a licence, assessed on its overall conduct, and have granted injunctions to holders whose offer had not been examined in detail. The British courts have agreed to set the FRAND terms themselves, the injunction being granted only if the manufacturer refuses the licence so determined. The Unified Patent Court issued its first decisions from 2024, granting injunctions where the manufacturer had not shown the expected diligence. The French courts assess the conduct of the parties in the light of contractual good faith, the FRAND undertaking being analysed as a contract governed by French law.

Key points

In practice, the conduct of the negotiation before any trial determines the outcome of the application for an injunction. Each exchange must be written, dated and consistent with the expected steps, on the holder’s side as on the manufacturer’s. The firm assists both types of players in this negotiation and in the litigation that follows, as presented on the pages FRAND and standard essential patents counsel and FRAND undertaking, and on the entries patent hold-up and patent hold-out.