The recent ruling in the Huawei v ZTE case (C 170 / 13)
largely confirms the opinion of the Advocate General (discussed in our
blog of 2.12.2014).
largely confirms the opinion of the Advocate General (discussed in our
blog of 2.12.2014).
This sentence represents a break with the criteria
restrictive restrictions established by the German Supreme Court (BGH) in the case
Orange Book (in German) relating to the adjustment of
essential patents for a standard with competition law.
They also represent support for the position maintained by the European Commission,
which has always been very critical of the Orange Book resolution.
restrictive restrictions established by the German Supreme Court (BGH) in the case
Orange Book (in German) relating to the adjustment of
essential patents for a standard with competition law.
They also represent support for the position maintained by the European Commission,
which has always been very critical of the Orange Book resolution.
The Court does not apply the rules established by the BGH in
the case Orange Book, where the request for termination by the holder of a
patent that enjoys a dominant position, could only be considered abusive
if the alleged infringer had made an unconditional and binding offer,
without this being able to be limited to cases in which the
patent infringement.
the case Orange Book, where the request for termination by the holder of a
patent that enjoys a dominant position, could only be considered abusive
if the alleged infringer had made an unconditional and binding offer,
without this being able to be limited to cases in which the
patent infringement.
The Court, however, considers that it is the holder of the
patent the one who is obliged to send a prior request warning about
the alleged infringement and in turn offering a license under conditions
FRAND (equitable, reasonable and non-discriminatory) of habitual employment,
specifying, in particular, the royalty price as well as the method of
calculation. Failure to do so could be considered an abuse of position.
dominant.
patent the one who is obliged to send a prior request warning about
the alleged infringement and in turn offering a license under conditions
FRAND (equitable, reasonable and non-discriminatory) of habitual employment,
specifying, in particular, the royalty price as well as the method of
calculation. Failure to do so could be considered an abuse of position.
dominant.
The alleged infringer would then be entitled to present
a counter-offer with alternative conditions and could even offer a
bank guarantee or offering to deposit an amount in a deposit. He
Patent holder may only request termination from a court in the case of
that the counter-offer could be considered banal or a mere delaying tactic.
The alleged infringer could also reserve the right to challenge the
validity of the patent and the existence of infringement
a counter-offer with alternative conditions and could even offer a
bank guarantee or offering to deposit an amount in a deposit. He
Patent holder may only request termination from a court in the case of
that the counter-offer could be considered banal or a mere delaying tactic.
The alleged infringer could also reserve the right to challenge the
validity of the patent and the existence of infringement
This ruling means that the rights enjoyed by the
holders of essential patents for standards under the “Orange Book criteria"
are clearly restricted.
holders of essential patents for standards under the “Orange Book criteria"
are clearly restricted.
NB. Spanish version of the article published in the IP Finance Blog
Author Colm Ahern
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