Interpreting, Performing and Discharging the ETSI Licensing Declaration’s Obligation for Patent Holders Under French and California Contract Law

26 Pages Posted: 13 Dec 2022

Date Written: November 22, 2022

Abstract

According to the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights Information Statement and Licensing Declaration, patent owners declare that they are “prepared to grant irrevocable licenses…”. In this article, we explore different possible interpretations of this obligation having reference to basic contract law principles, with specific regard given to issues of performance and discharge. In view of the plain language of an obligation, the intention of the parties as set forth in the ETSI Intellectual Property Rights Policy, what is a reasonable in the circumstances, what would make the obligation definite and capable of performance, and what would make the obligation lawful, we conclude that a patent owner’s obligation to ETSI should be capable of performance and discharge despite a lack of implementer cooperation. This conclusion appears consistent with Judge Rodney Gilstrap’s interpretation of the obligation to ETSI as set forth in the case of HTC v. Ericsson (E.D. Texas, 2019). Even if the obligation were interpreted to require implementer cooperation, a failure to provide such cooperation in a timely manner would appear to further justify discharge, notwithstanding a lack of performance on the part of patent owners.

Keywords: FRAND, Standards, SEP, Patent, Contract, Performance, Discharge, Antitrust, ETSI

JEL Classification: K12, K21

Suggested Citation

Dodd, Curt, Interpreting, Performing and Discharging the ETSI Licensing Declaration’s Obligation for Patent Holders Under French and California Contract Law (November 22, 2022). Available at SSRN: https://ssrn.com/abstract=4284149 or http://dx.doi.org/10.2139/ssrn.4284149

Curt Dodd (Contact Author)

Harfang IP ( email )

1000 Heritage Center Circle
Unit 508
Round Rock, TX 78664
United States

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