Enforcement of Standard Essential Patents in Germany – Still an Effective Tool for Patentees?
Written By
Associate
Germany
As an associate in our Düsseldorf IP team, I counsel clients on industrial intellectual property rights focusing on patents, utility models, unfair competition, as well as on the intersection with antitrust law.
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The landmark decision of Huawei v. ZTE by the European Court of Justice in 2015 ushered in a new era for antitrust objections and compulsory licenses in Europe. For the first time, the European Supreme Court provided a detailed guideline for SEP holders and technology users to follow during SEP license negotiations. Five years later, the Sisvel v. Haier decisions by the German Federal Court of Justice were highly anticipated, carrying significant implications for patent litigation in Germany. Now, eight years after the European Court of Justice's decision and three years after the Federal Court of Justice's decisions, the German instance courts have incorporated Huawei v. ZTE and Sisvel v. Haier into their case law, presenting a clear picture of how they address the dilatory FRAND objection.
In the second edition of the GRUR Patent, a monthly journal that covers important and recent patent-related topics, our Dusseldorf-based lawyer, Jonas Smeets, who is actively involved in SEP proceedings, contributed an article on the Enforcement of SEP Licensing before German Courts. You can read his full article here.
The article reviews the multi-step guideline of the European Court of Justice in Huawei v. ZTE, evaluates the Sisvel v. Haier decisions of the Federal Court of Justice, examines relevant case law from the major instance courts in Dusseldorf, Mannheim, and Munich, implementing Sisvel v. Haier. It also identifies key takeaways from the mentioned case law and provides a global outlook, comparing the current German regime to other jurisdictions and its implications for the upcoming Unified Patent Court.
Takeaways from the article
Based on the current situation, it appears that German courts prioritise deciding on patent infringement before determining subsequent royalty rates. They may grant injunctive relief unless antitrust law forbids. This situation makes Germany an attractive location for litigation, as FRAND royalties have not yet been set by German courts. The automatic injunction, considered 'the sharp sword' of German Patent Law, still exists despite theoretical limitations introduced by the Amended Patent Act (2nd PatModG).Looking ahead, it remains to be seen how the Unified Patent Court will handle FRAND matters. The Huawei v. ZTE decision will undoubtedly serve as a binding precedent for the court (Art. 21 UPCA), and the decisions of the German Federal Supreme Court are expressly recognized sources of law from which the court can draw (Art. 24(1)(e) UPCA).
