Transatlantic Convergence or Divergence of Approaches to the FRAND Licensing of Standard Essential Patents? Comparing Approaches of the Case Law and Regulatory Initiatives in the EU and US

Investigator:
Erik Habich

Abstract:
Both the United States and several jurisdictions in the European Union are among the preferred go to jurisdictions for the enforcement of standard essential patents for which the patent owner has submitted a commitment to license the technology on fair, reasonable, and non-discriminatory (FRAND) terms. While the patents of the standardized technology, and therefore the corresponding infringement proceedings, are national, licensing agreements for standard-compliant products generally are global in scope. Divergent approaches to regulating FRAND negotiations and licensing in the EU, the US, and other jurisdictions may therefore lead to the conundrum that negotiation conduct or licensing conditions offered by either the patentee or the standard implementer would be deemed FRAND compliant in one jurisdiction while potentially be regarded a violation of the FRAND commitment in other jurisdictions. A recent illustration of strategic behavior by the stakeholders in exploiting a divergence of national approaches within the negotiation of global licenses for standard-compliant products is the rise of anti-suit injunctions in the US, the UK, France, Germany, China, and India, with no satisfactory solution for this escalating race to the bottom in sight.

This project aims to explore the substantive roots of this procedural issue that lay in potentially divergent approaches to the meaning of FRAND in the EU and the US. Taking a comparative approach, this research project aims to build a bridge across the Atlantic to create the foundation for a well-informed cross-jurisdictional dialogue on the substantive questions of FRAND. Therefore, the project identifies and contrasts the transatlantic approaches on key issues of FRAND conduct and FRAND licensing conditions. The project introduces the reader to the relevance of the issue and the convergence or divergence of approaches to adjudicating and regulating FRAND disputes in the EU and the US. Thereafter, the project dives into key issues of divergence and / or convergence identified in the relevant case law. Finally, the paper will offer perspectives of convergence for the respective areas and conclude.”