Enforcement of Standard Essential Patents in Germany – Still an Effective Tool for Patentees?

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).