Short Reads

Huawei v ZTE: ECJ rules on injunction possibility of SEP owner against alleged infringer after a FRAND licensing proposal – abuse of dominant position

Huawei v ZTE: ECJ rules on injunction possibility of SEP owner against alleged infringer after a FRAND licensing proposal – abuse of dominant position

Huawei v ZTE: ECJ rules on injunction possibility of SEP owner against alleged infringer after a FRAND licensing proposal – abuse of dominant position

12.08.2015 BE law

The European Court of Justice (“ECJ”) handed down its decision on July 16, 2015 in the case Huawei v. ZTE (C-170/13). It clarified the possibility for owners of a standard-essential patent (“SEP”) to seek an injunction against alleged infringers.

Also available in French and Dutch. 

The case concerns a request for preliminary ruling by the Dusseldorf Regional Court, who requests the ECJ to answer to the question whether Huawei is abusing its dominant position as an SEP owner by seeking an injunction against ZTE for the use of Huawei’s LTE patented technology without paying royalties to the latter. 

According to the ECJ, an SEP owner who seeks an injunction as a result of the alleged unauthorized use of its patented technology by a third party does not abuse its dominant position, in the sense of Article 102 of the Treaty on the Functioning of the EU (“TFEU”), if:

  1. The SEP owner has  notified the third party about the alleged infringement;
  2. The SEP owner has presented a Fair, Reasonable, and Non Discriminatory (“FRAND”) licensing proposal to said third party;
  3. After having received the notice and proposal (mentioned in 1 and 2 above), the alleged infringer continues to use the SEP owner’s patented technology without responding to the SEP owner that it is willing to enter into FRAND licensing negotiations.

The ECJ further clarified that an alleged infringer that has not accepted a licensing offer can only assert that the SEP owner is abusing its dominant position if the alleged infringer has actually responded to the FRAND licensing offer with a written counter-offer.

Although this decision gives some clarification on the matter, several questions remain unanswered. For example, the ECJ did not clarify what can be considered as a FRAND licensing offer. Further, if the parties have submitted a FRAND offer and counter-offer, but they cannot come to an agreement, litigation concerning unauthorized use of the patent will still be inevitable.

Team

Related news

28.04.2020 EU law
Philippe Campolini co-authored a book dedicated to the protection of trade secrets in Belgium

Articles - The book, entitled 'Secrets d'Affaires' and published in the collection of the Dossiers du Journal des tribunaux, discusses the key concepts of the new protection regime, the lawful and unlawful acts defined in the EU Trade Secrets Directive (TSD) and the way they have been transposed in Belgian law, the implications of the new regime on contracts (especially employment contracts), and the protection of trade secrets in the context of administrative law.

Read more

20.03.2020 EU law
Philippe Campolini authored the Belgian chapter of EPO's country-by-country overview on patent enforcement in Europe

Articles - In the interests of promoting harmonisation and knowledge exchange in patent enforcement and litigation practices, the European Patent Academy, together with authors from all over Europe, has compiled a book to offer a comprehensive reference and guide to the measures available to protect patent rights across the 38 EPC contracting states as well as the relevant national procedures to enforce them.

Read more

28.04.2020 EU law
Origin of the primary ingredient - Implementing Regulation 2018/775

Short Reads - Since the beginning of this month, the origin of the primary ingredient of a food must be clearly indicated on the product when it differs from the origin given for the product as a whole. This is the result of the implementation of Article 26 (3) of the European Regulation 1169/2011 on the provision of food information to consumers.  

Read more