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Faculty of Law (Faculteitskamer - A1.01). Title: "The Meaning of FRAND: Royalties and Injunctions". Topic: Pricing for compulsory IP Licensing. Doors open from 11.45, lunch will be served.

Event details of ACLE Economic Evidence in Legal Procedures seminar: Gregory Sidak (Tilburg University)
Date 14 April 2014
Time 12:00 -13:15
Location Oudemanhuispoort
Room Faculty of Law: Oudemanhuispoort - Faculteitskamer - A1.01

Abstract

A patent holder’s right to seek an injunction against the infringer of a patent that the holder has committed to licensee to anyone on fair, reasonable, and nondiscriminatory (FRAND) terms is one of the most controversial issues concerning standard-essential patents (SEPs). The relevant question is whether, and under what conditions, the SEP holder may seek an injunction against such an implementer without breaching the SEP holder’s FRAND contract. I show that the SEP holder’s contractual obligations do not bar the SEP holder from seeking an injunction. A FRAND commitment requires the SEP holder to make a FRAND licensing offer. However, a duty to make a FRAND offer does not ensure that a licensing agreement will eventuate. Negotiations might fail if the implementer refuses or cannot pay a FRAND license. Extending a genuinely FRAND offer entirely fulfills the SEP holder’s FRAND obligation. An SEP holder that has discharged its FRAND commitment should be able to request and obtain an injunction against the infringer that refuses such FRAND offer. I also analyze the arguments in favor of imposing a categorical ban on injunctions for FRAND-committed SEP holders. I find no valid economic justification for introducing such a ban. To the contrary, such a ban would facilitate opportunism by infringers. Courts already can prevent opportunistic misuse of injunctions by SEP holders by limiting the availability of injunctions to cases where the court determines that the implementer is an “unwilling” licensee. I identify factors that courts and other tribunals should consider when assessing the willingness of the parties to engage in a voluntary, bilateral negotiation to set FRAND terms. Those factors, taken together, will foster good-faith negotiations by both SEP holders and implementers.

 

An earlier paper in this two-part series on the meaning of FRAND, which addresses royalties, provides more background. Key points will be summarized in professor Sidak's talk in greatly condensed form.

 

Oudemanhuispoort

Room Faculty of Law: Oudemanhuispoort - Faculteitskamer - A1.01

Oudemanhuispoort 4-6
1012 CN Amsterdam