Germany: CJEU requirements in FRAND cases

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Germany: CJEU requirements in FRAND cases

For years, the courts have been preoccupied with infringement proceedings that are conducted by standard essential patents (SEP) holders, who previously submitted declarations as part of the standardization process, namely assurances that prospective licensees will be granted licences under fair, reasonable and non-discriminatory (FRAND) conditions. The dispute is particularly about the extent to which an SEP can be enforced in court by dominant companies without them, in doing so, breaching the antitrust abuse law under Article 102 TFEU.

In its judgment Huawei Technologies / ZTE from July 16 2015 (Rn C-170/13), the CJEU showed how patent holders and patent infringers should behave in infringement proceedings concerning a SEP with a FRAND declaration, to avoid committing an antitrust infringement and thereby be able to rely on the antitrust compulsory licence objection (proprietor) and not to risk a sentence for the omission of further acts of use (patent infringer):

Although, through the submission of a FRAND declaration, the patentee does not waive the judicial assertion of injunctive relief or recall claims, he does, however, create a legitimate expectation to that effect, on the basis of which he is obliged to point out to patent infringers their alleged infringement before bringing an action for injunction or recall and to hear their case. If the infringer expresses his willingness to license the patent, the owner of the SEP must make this infringer a licence offer, which must meet FRAND terms and specify the licence fees and how they are calculated.

The patent infringer has an obligation to respond to this offer with the due care resulting from the established practice in the relevant field and acting in good faith. Delaying tactics are forbidden. If he does not wish to accept the patentee's offer, he must make a counter offer within a short period, which in turn must correspond to FRAND terms. Should this counter offer be rejected, the infringer is also obliged to deposit adequate security in accordance with business practice in which also the infringer's billable number of past acts of use is considered. However, during the licence negotiations, the infringer is not prevented from attacking the legal validity of the patent in suit and/or from denying its usage and/or its essentiality for the implemented standard.

If the parties do not reach an agreement in this manner, the CJEU shall grant them the opportunity, by mutual consent, to have the licence terms determined by an independent third party, who has to decide within a short deadline.

Finally – according to the CJEU – the patent holder's possibility to sue the patent infringer for previous acts of infringement, requesting accounting and/or damages, is not affected by Article 102 TFEU.

The CJEU's chosen course thus strikes a balance between the owner-friendly Orange Book jurisprudence of the Bundesgerichtshof and the user-friendly Motorola decision of the European Commission dated April 29 2014 (C [2014] 2892).

stief.jpg
fuchs.jpg

Marco Stief

Stefan G Fuchs


Maiwald Patentanwalts GmbHElisenhof, Elisenstr 3D-80335, Munich, GermanyTel: +49 89 74 72 660 Fax: +49 89 77 64 24info@maiwald.euwww.maiwald.eu

more from across site and SHARED ros bottom lb

More from across our site

Firms explain the IP concerns that can arise amid attempts by brands to show off their ‘Canadianness’ to consumers
Counsel say they will be monitoring issues such as the placement of house marks, and how Mondelēz demonstrates a likelihood of confusion in its dispute with Aldi
The EUIPO expanding its mediation services and a new Riyadh office for Simmons & Simmons were also among the top talking points this week
David Boundy explains why Pierson Ferdinand provides a platform that will allow him to use administrative law to address IP concerns
Developments included an anti-anti-suit injunction being granted for the first time, and the court clarifying that it can adjudicate over alleged infringements that occurred before June 2023
Griffith Hack’s Amanda Stark, one of our ‘Top 250 Women in IP’, explains how peer support from male colleagues is crucial, and reveals why the life sciences sector is thriving
The case, which could offer clarity on the training of AI models within the context of copyright law, will go to trial in the UK next week
CMS IndusLaw co-founder Suneeth Katarki says he plans to hire a patent team in India and argues that IP should play a major role within full-service firms
Partners at the firm explain why they’ve seen more SEP cases at the ITC, and why they are comfortable recommending the forum to clients
The association, which will head to London in 2026, hosted its flagship event in the Californian city in 2005, 2015 and 2025
Gift this article