Anti-suit injunctions for standard-essential patents: the emerging gap in international patent enforcement

Abstract

The unprecedented success of standardization in the field of wireless telecommunications, with the development of 2 G, 3 G, 4 G and—currently—5G standards, has engendered a market for standards, and standard-compliant products and equipment of global proportions.1 Cooperation between technology developers and contributors to standard development organizations (SDOs) on the one side, and users of standards on the other, for the development of innovative international standards has, however, also entailed disputes regarding the licensing of standard-essential patents (SEPs). Of particular importance in SEP-litigation is the issue of which licensing terms can be viewed as fair, reasonable and non-discriminatory (FRAND). Because patents are territorial rights and major technology contributors hold SEPs in various jurisdictions, it is not uncommon—in case a FRAND outcome is not reached through bilateral negotiations—for FRAND disputes to result in lawsuits being filed in several jurisdictions. In patent infringement actions, national courts routinely review the FRAND-conformity of the conduct of both parties in negotiations before awarding the remedy of injunctive relief.2 Adding to that, the contractual nature of the FRAND commitment provided by SEP-holders to SDOs may give parties to a FRAND dispute cause of action for a declaratory judgment that a given licensing offer is, or is not, FRAND.3 Hence, a situation of overlapping jurisdiction may arise in international FRAND disputes.