Standard essential patents and FRAND licensing in telecommunications

In telecommunications, the patent cannot be separated from the standard. Holders of patents declared essential have undertaken to the standardisation body to grant licences on fair, reasonable and non-discriminatory (FRAND) terms. The dispute concerns that undertaking as much as infringement.

Issues specific to the sector

Essentiality, validity and infringement are argued as in any patent case. But the outcome also depends on how the parties conducted the negotiation: the judgment of the Court of Justice of the European Union in Huawei v ZTE (16 July 2015, C-170/13) sets the conditions under which a patent holder may seek an injunction without abusing a dominant position.

The undertaking given to ETSI is governed by French law. We argue that it constitutes a stipulation for the benefit of a third party, which gives implementers a direct right and gives the French courts a natural role in defining the parties’ obligations (The FRAND undertaking, a contract under French law).

Disputes are global and run in parallel before several courts, including the Unified Patent Court. Forum, timing and the interplay with any arbitration are decisive.

How we act

• Infringement actions on standard essential patents and defence of implementers, in France and before the Unified Patent Court.
• Analysis of licence offers and counter-offers in the light of the Huawei v ZTE framework.
• Arbitration and mediation of FRAND disputes.
• Monitoring of FRAND decisions in Europe and worldwide, published in the FRAND Litigation Watch.

Is a licence negotiation becoming contentious? Let us discuss it.