Conditions under which FRAND-patent holder does not abuse dominant position to pursue infringement proceedings

18-07-2015 Print this page
IPPT20150716, CJEU, Huawei v ZTE

PATENT LAW

 

FRAND-patent holder does not abuse a dominant position to pursue infringement proceedings if he alerted the alleged infringer of the infringement, presented a specific, written offer for a licence on FRAND terms and the infringers continues to use the patent in question


"Article 102 TFEU must be interpreted as meaning that the proprietor of a patent essential to a standard established by a standardisation body, which has given an irrevocable undertaking to that body to grant a licence to third parties on fair, reasonable and non-discriminatory (‘FRAND’) terms, does not abuse its dominant position, within the meaning of that article, by bringing an action for infringement seeking an injunction prohibiting the infringement of its patent or seeking the recall of products for the manufacture of which that patent has been used, as long as:
– prior to bringing that action, the proprietor has, first, alerted the alleged infringer of the infringement complained about by designating that patent and specifying the way in which it has been infringed, and, secondly, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, presented to that infringer a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated, and
– where the alleged infringer continues to use the patent in question, the alleged infringer has not diligently responded to that offer, in accordance with recognised commercial practices in the field and in good faith, this being a matter which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics."

 

Not prohibited for holder patent on FRAND terms in a dominant position to bring an action against the alleged infringer and seek the rendering of accounts or an award of damages in respect of those acts of use


"Article 102 TFEU must be interpreted as not prohibiting, in circumstances such as those in the main proceedings, an undertaking in a dominant position and holding a patent essential to a standard established by a standardisation body, which has given an undertaking to the standardisation body to grant licences for that patent on FRAND terms, from bringing an action for infringement against the alleged infringer of its patent and seeking the rendering of accounts in relation to past acts of use of that patent or an award of damages in respect of those acts of use."

 

IPPT20150716, CJEU, Huawei v ZTE

C-170/13 - ECLI:EU:C:2015:477