The Approach of English Courts in SEP Disputes: No Standalone Actions for Determination of Global FRAND Rates

12 Pages Posted: 27 Jul 2023

See all articles by Igor Nikolic

Igor Nikolic

European University Institute

Date Written: July 24, 2023

Abstract

In 2017, English courts set, for the first time, global fair, reasonable and non-discriminatory (FRAND) rates between parties in a standard-essential patent (SEP) dispute. This has, in the eyes of some experts, placed the UK as a global rate-setter, which does not afford the necessary consideration for the competences of other countries. However, such an interpretation is not entirely true. In fact, the UK’s approach is grounded in patent law and in the assessment of patent infringement and validity. The determination of global FRAND terms by UK courts only occurs at the remedy stage of a dispute. The process is the following: First, the court needs to find infringement of a UK patent. Second, the court must acknowledge the contractual obligation of the SEP owner to offer FRAND terms to the implementer. Third, if the court believes the commercial practice in the specific case consists of global portfolio licensing, it sets the terms within that scope. Fourth, only when the infringer rejects the court-determined FRAND terms, is it subject to an injunction, which only applies to the UK market. In other words, there are no standalone claims for global FRAND royalty determinations independent of patent litigation and findings of infringement and validity of SEPs.

This article will scrutinise the position of UK courts in deciding SEP disputes. In particular, it will analyse leading cases and the most recent developments in SEP litigation and will focus on how UK courts characterise SEP disputes and their interpretation of a FRAND commitment. It is hoped that a better understanding of the UK’s position will assist judges, lawyers, and policymakers in resolving SEP disputes in other countries.

Keywords: SEPs, FRAND, UK, global rates

JEL Classification: K19, K29, K39, K41

Suggested Citation

Nikolic, Igor, The Approach of English Courts in SEP Disputes: No Standalone Actions for Determination of Global FRAND Rates (July 24, 2023). Available at SSRN: https://ssrn.com/abstract=4519405 or http://dx.doi.org/10.2139/ssrn.4519405

Igor Nikolic (Contact Author)

European University Institute ( email )

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