SEP Licensing After Two Decades of Legal Wrangling: Some Issues Solved, Many Still to Address

This paper explores where we stand after two decades of European Commission investigations, substantial patent litigation in national courts, and a major judgement of the Court of Justice of the European Union devoted to SEP licensing and its relationship with EU competition law. As will be seen, while consensus has been reached over several issues, a lot remains to be done. This paper is divided in four parts. Part II describes the issues that have been addressed, albeit not always satisfactorily, by competition authorities and courts over the past years. Part III discusses some of the SEP licensing issues that still largely need to be solved with a focus on six questions: (i) what is the nature of the FRAND commitment?; (iii) what is a FRAND license?; (ii) should the gaps left by the CJEU in Huawei v. ZTE be filled and if so how?; (iv) can a court that finds that local SEPs have been infringed force the infringer to take a global license on pain of an injunction?; (v) access for all v. license to all: What are the obligations of the SEP holder?; and (vi) how should SEP licensing adapt the IoT context? Part IV concludes.

By Damien Geradin¹

I. INTRODUCTION

Over the past two decades, issues linked to the licensing of standard-essential patents (“SEPs”) have kept intellectual property (“IP”) and competition lawyers busy. As is well known, SEP licensing is a conflictual area for several reasons. First, companies have different busi