ARTICLE
22 June 2016

German Overview

In the last few months there have been a series of decisions of the Mannheim and Düsseldorf regional courts interpreting the requirements of the CJEU's, judgment in Huawei Technologies Co. Ltd. v ZTE Corp (C-170/13)...
Germany Intellectual Property

In the last few months there have been a series of decisions of the Mannheim and Düsseldorf regional courts interpreting the requirements of the CJEU's, judgment in Huawei Technologies Co. Ltd. v ZTE Corp (C-170/13) – see below:

  • "Prior to an [action for an injunction], it is for the patentee ("[P]") to alert the alleged infringer ("[D]") of the infringement complained about by designating that SEP and specifying the way it has been infringed." (judgment, para 61);
  • "...after [D] has expressed willingness to conclude [a licence] on FRAND terms, ... [P] to present ... a specific, written offer...on FRAND terms...specifying, in particular, the amount of the royalty and the way in which that royalty is to be calculated." (para 63);
  • "...[D] diligently to response to that offer, in accordance with recognised commercial practices in the field and in good faith...no delaying tactics" (para 64);
  • "Should [D] not accept the offer..., it may rely on abusive nature of an action for [an injunction] ...only if [D] has submitted..., promptly and in writing, a specific counter-offer that corresponds to FRAND terms" (para 66);
  • "...from the point at which...its counter-offer is rejected, [D] to provide appropriate security... [e.g.] by providing a bank guarantee... calculation of that security... must include, inter alia, the number of past acts... and [D] must be able to render an account of those past acts...". (para 67)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More