Litigating standard-essential patents deviates from litigating ordinary implementation patents in at least two aspects: on the one hand, proof of infringement may be easier for the patentee because it can show that the features of the standard-essential patent have been implemented into a standard that is used by the defendant. On the other hand, antitrust law and the rules of standard-setting organisations on the licencing of standard-essential patents may grant the defendant additional defences, specifically against the patentee's claim of infringement and/or request for an injunction. In this article, lawyers from four firms across Europe consider the antitrust defence – and how it can be applied – in their own jurisdictions.
France
Technical standards and patents are poles apart: the standard recommends the use of a technology to all manufacturers whereas the patent reserves its use to the owner.
Their coexistence is therefore potentially explosive. How, then, to resolve the conflict arising when a standard recommends the use of technology on which a company has retained market exclusivity through the filing of a patent?
With respect to patent litigation, the question arises in the following terms: should the holder of a patent declared essential to a standard obtain an injunction prohibiting a third party from using this patent when implementing the standard?
Although various actions have been brought on the basis of patents declared essential to a technical standard, in particular in the telecommunications sector and in the audio and video industries, French courts have not ruled on this question.
However, it can be assumed how they would answer it by analysing, under French law, (1) the nature and (2) the effects of the declaration pursuant to which the holder of a patent, after having declared this patent essential to a standard, gives an undertaking to the standard-setting organisation concerned that it is prepared to grant a (fair), reasonable and non-discriminatory ((F)RAND) licence to any user of the standard.
Nature of the undertaking to grant a (F)RAND licence
The main objective of a standard-setting organisation is to elaborate standards and to promote their application.
To pursue this objective, a standard-setting organisation seeks to reduce the risk of seeing the investment made in the preparation and adoption of its standards wasted because the IP rights necessary ("essential" according to the applicable terminology) to these standards are not made accessible to those wishing to comply with them.
The holders of IP rights essential to the implementation of a standard are therefore required under the guidelines of the standard-setting organisations to undertake in writing to grant irrevocable licences to the companies using the standard, thus eliminating the uncertainty which, failing such undertaking, would surround potential users of the standardised technology (if the holders of these rights do not provide such undertaking, the standard is generally not adopted).
To ensure that these standardisation agreements on technologies which are subject to industrial property rights do not restrict competition, such licences are required to be made available on (F)RAND terms.
Under French law, this tripartite mechanism by which a stipulator (the standard-setting organisation) obtains from a promissor (the holder of the IP right) an undertaking to the benefit of a third-party beneficiary (the manufacturer wishing to use the standard) is construed as a third-party-beneficiary contract known as a stipulation pour autrui.