In a press release in December 2012, the European Commission
gave notice that the enforcement of standard-essential patents may
constitute an abuse of a dominant market position if the challenged
infringer is willing to take out a licence under fair, reasonable
and non-discriminatory (FRAND) conditions.
In the specific case in question, Samsung challenged Apple in
respect of various patents that are required in accordance with the
UMTS mobile communications standard and therefore must be used by
all companies. Apple had "shown itself to be willing to
negotiate". Nevertheless, Samsung sought enforcement of the
injunctive relief by way of interim injunctions. This is where the
Commission now sees the possibility of an abuse of a dominant
market position, as indicated in the aforementioned press
This opinion of the EU Commission thus differs substantially
from the previous German case law of the Federal Court of Justice
(BGH) in the "Orange Book" decision.
Here, the BGH set out extremely strict prerequisites for the
permissibility of the antitrust law defence, which go far beyond
the EU Commission's position indicated in the press release.
The BGH required the infringer to submit a definite licence
proposal, to provide information, to calculate and pay (or deposit)
the licence fee and not to raise a challenge against the
intellectual property right (nullity proceedings).
On the contrary, the Commission appears to deem it sufficient if
the infringer is seriously willing to negotiate a licence under
"FRAND" conditions. If this position is confirmed, the
German case law on the permissibility of the antitrust law defence
in the case of standard-essential patents will undergo a dramatic
change and weakening. The BGH conditions have in fact frequently
been criticised as being too strict and have therefore not given
rise to any successful objections in practice.
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