Paul Nihoul

Injunctions on Standard Essential Patents: in Search of a ‘Clear Bright Line’

If an intellectual property (IP) infringer has the ‘aptitude’ to agree on fair, reasonable, and non-discriminatory (FRAND) licence and pay royalties, the holder of a standard-essential patent (SEP) must take certain steps before seeking an injunction, Advocate General (AG) Melchior Wathelet advised the Court of Justice in November 2014. Unless the SEP holder can prove that an IP infringer was aware of the existence of the patent, they should warn the infringer in writing—identifying the infringement and the relevant SEP—as well as make an offer to license on FRAND terms, before going to a court for injunction, Wathelet said. The infringer on their part must respond with a counter-offer in a ‘serious and diligent manner’—the SEP holder would be entitled to seek an injunction if the infringer acts ‘purely tactically and dilatory’. The Advocate General distinguished the Huawei/ZTE dispute from Orange-Book-Standard case emphasising that the latter concerned de facto standard and there was no obligation for the SEP holder to grant licences on FRAND terms. ‘Even though I consider that mere vague and non-binding willingness of the infringer to negotiate cannot limit the right of the SEP holder to exercise an injunction’, the Advocate General said, applying either one or the other position would lead to an excess or a defect in the protection of SEP holders, of the users of the patents technique, or of consumers, he concluded. An SEP holder seeking injunctions by can be abusive if the infringer has been ‘objectively willing and able to acquire the licence’, added the Advocate General. These questions had earlier been investigated by the Commission in several cases, two of which were decided on 29 April 2014.

A New Era for Litigators: Change in the Admissibility of Applications Against Regulations Adopted in the Field of Competition

The Court of Justice of the European Union (CJ) recently clarified the conditions under which applications for annulment directed against acts adopted by European institutions are admissible where such acts have a general scope. Does that clarification have consequences for the practice of competition law in the European Union? Most acts adopted in that field are decisions addressed to one or several undertakings. So is it for decisions applying Article 101 or 102 of theTreaty on the Functioning of the European Union (TFEU); typically, such acts are adopted by the European Commission and rule over the existence of a restriction to competition in the context of a coordination or a dominant position. The same can be stated for decisions adopted in application of the Merger Regulation. These decisions normally provide the analysis of the European Commission as to the existence of a significant impediment to effective