FRAND & Standard-Essential Patents (SEPs)

Where a patent is essential to a standard (4G/5G, Wi-Fi, codecs vidéo, IoT), son titulaire s’est en général engagé auprès de l’organisme de normalisation, telle l’ETSI, to grant licences on fair, reasonable and non-discriminatory terms (FRAND). That undertaking gives rise to a distinctive body of litigation, at the meeting point of patent law, contract law and competition law. It is one of the firm's core areas.

What we do

We act for owners of standard-essential patent portfolios and for licence candidates (implementers) at every stage: essentiality review and portfolio mapping; conduct of the negotiation within the framework laid down by the judgment Huawei/ZTE de la Cour de justice de l’Union européenne (C-170/13, 16 juillet 2015) : notification, offre FRAND, contre-offre, garanties ; contentieux de l’injonction et défense fondée sur l’abus de position dominante ; détermination du taux FRAND, analyse des licences comparables et gestion de leur confidentialité ; arbitrage et médiation, souvent mieux adaptés à la dimension mondiale de ces litiges.

Hold-up and hold-out: characterising the parties' conduct

FRAND litigation is won first on the characterisation of the parties' conduct: did the patentee make a genuinely FRAND offer? 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 proceedings) because it is what the judge will read.

A practice grounded in scholarship

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, and an academic and professional network in the main jurisdictions. See also our page Patent litigation and our practice before the UPC.

A FRAND dispute, a negotiation that has stalled, an injunction on the horizon? Contact us.

How the rate is set

FRAND litigation is shifting from the question of the injunction to the question of price. Two methods dominate the discussion: comparison with existing licences, which means obtaining production of those contracts and neutralising portfolio and bundling effects, and the descending approach (top down), which starts from a cumulative rate for the standard and then allocates it according to the portfolio's share of the patents that are truly essential. The debate then turns on the royalty base, on the geographic scope of the licence and on the treatment of past sales.

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

What the Unified Patent Court has already decided

The Mannheim Local Division handed down 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). Those decisions assess the conduct of the parties in the negotiation as a whole, rather than as a sequence of formal steps where the slightest failure would be sanctioned automatically.

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

The French front

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 interface with competition law, see patents and competition law.

The European regulatory framework

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